SINGAPORE Law and Practice Contributed by: Yvonne Tang, Lim Siau Wen and Ruby Tham, Drew & Napier LLC
5.2 Legal Grounds for Filing an Opposition or Cancellation
After the close of pleadings, the parties will file evidence. There are generally three rounds: • the opponent’s evidence in support of the opposition; • the applicant’s evidence in support of the application; and • the opponent’s evidence in reply. The Registrar may grant longer evidentiary time - lines where parties are negotiating or if there are pending court proceedings which may affect the outcome of the opposition. After the evidence has been filed, the Registrar may convene a pre-hearing review to give direc - tions for the disposal of the proceedings. They will set down the matter for hearing, and parties have one month before the hearing date to sub - mit their written submissions. After the hearing, the Registrar will issue a decision as soon as is practicable. Applications for revocation or invalidity may be made to the Registrar or in the General Division of the High Court. Exceptions apply such that: • the action must be brought in Court where proceedings concerning the trade mark in question are pending in the Court; or • if the application is made to the Registrar, the Registrar may refer the application to the Court. Partial revocation or invalidation is possible, where grounds for revocation or invalidation exist only in respect of some of the goods/ser - vices for which a trade mark is registered.
The absolute and relative grounds for refusal of registration are grounds upon which an oppo - nent may file an opposition (see 4.6 Considera- tion of Prior Rights in Registration and 4.10 Refusal of Registration ). A trade mark registration may be revoked on grounds of non-use, genericism as a result of the proprietor’s acts or inactivity, or deception as a result thereof. The non-use period for the first ground is five years from the date of completion of the registration procedure. The grounds for invalidation include the absolute and relative grounds for refusal of registration (see again 4.10 Refusal of Registration and 4.6 Consideration of Prior Rights in Registration ). Additionally, invalidation may be ordered where there was fraud in the registration or the registra - tion was obtained by misrepresentation. 5.3 Ability to File an Opposition or Revocation/Cancellation Any person may file an opposition. The oppo - nent does not have to be represented by an agent. However, proceedings can be complex. Thus, parties to proceedings should consider engaging a qualified agent or lawyer. Any person may file a trade mark revocation or invalidation action. 5.4 Opposition or Revocation/ Cancellation Procedure An applicant wishing to contest an opposition must file a counter-statement within two months after the date that it receives a copy of the notice of opposition. This deadline is extendible by two months.
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