Once a trademark application has passed the substantive examination, it is published in the local trademark gazette for opposition purposes. In the two-month period following this publication date, any interested party is entitled to file an opposition to challenge the registration of the mark. You may have come across this very unique Singapore opposition procedure which is in no way comparable to other systems we know.
Given below are the various steps involved in the trademark opposition proceedings in Singapore, for easier understanding:
- Submission of the Notice of Opposition by the opponent
This document must include a statement of the grounds of opposition and it must be submitted in writing along with Form TM11 and the payment of the official fees before the opposition deadline. This deadline can be extended only once, by two months.
A copy of the Notice of Opposition shall be served to the other party, like any communication with the local trademark office, failing which, the opposition will not be validated.
- Submission of the counter-statement by the applicant
The applicant is given a two-month deadline to file a counter-statement. This deadline can be extended only once, by two months. Failure to submit the counter-statement or to request for the extension of time within the prescribed timeframe will result in the withdrawal of the application with respect to the opposed class(es) – and thus end the opposition procedure.
The content of the pleadings should clearly identify the nature and scope of the grounds which the applicant relies on. All the allegations included in the Notice of Opposition should be addressed by the applicant. However, the submission of evidence is not required at this stage.
- Suspension of the trademark opposition proceedings: mediation
Upon submission of the counter-statement, the opposition proceedings are suspended to encourage the parties to negotiate for a settlement and reach an amicable outcome. This suspension is the first special feature of the trademark opposition proceedings in Singapore. It is designed to promote time and cost-savings alternatives to litigation. The parties can obtain 30, 60 or 90 days to negotiate an amicable settlement. This period can be extended further upon request, for justifiable reasons. This attempt of negotiation is compulsory at this stage of the proceedings but the parties can request for mediation at any time during the opposition procedure until the final decision is rendered.
If the dispute is resolved amicably, the parties shall inform the duty officer in writing about the successful outcome of the negotiation.
- Case Management Conference
If during the suspension, the parties do not communicate with each other, or, if at the end of such period no settlement is reached, it is likely that the Registrar will organise a Case Management Conference (CMC) under Rule 81A of the Trade Marks Rules. The purpose of this conference is to provide the examiner an opportunity to discuss the dispute with the parties and explore the possibility of an amicable settlement. If they do not reach an agreement, the duty officer will then issue timelines for the filing of evidence. The deadlines will depend on several factors such as any pending negotiations between the parties, are the parties based overseas, etc.
- Submission of statutory declarations by the parties
These declarations are a critical step in the trademark opposition proceedings in Singapore. They include the repetition of the grounds of each party, with the submission of all the documents and evidence in support thereof, along with the review of the other party’s grounds. Each party is given a three-month deadline which is extendable upon request. The opponent is even granted the option to counter-argue the statutory declaration submitted by the applicant. Evidence can then no longer be submitted unless expressly authorized or requested by the officer himself.
If the statutory declaration is not filed by the opponent in time, the opposition is considered as withdrawn. Similarly, if the statutory declaration is not filed by the applicant, the opposed mark’s application will lapse.
- Hearings
Pre-hearing reviews shall be arranged by the duty officer to consider any issues such as the possibility of an amicable settlement of the dispute between the parties. Parties will then be notified of the date of the final hearing to present their arguments. Each party is invited to file written submissions with the Registrar, as well as a Bundle of Authorities, at least one month prior to the hearing date.
Within 3 months, IPOS will render its decision and expose the various opposition grounds. This decision is not final as the parties are entitled to appeal the same within 28 days before the High Court.
The opposition proceedings in Singapore are unique and complex. They can last for years and would involve the submission of several documents and extensive evidence, several meetings before IPOS, and hearings, as described above. This being said, the Intellectual Property Office of Singapore has taken steps recently to expedite the process and reduce substantially the length of the average opposition proceedings by shortening deadlines and reducing the possibilities of requests for the extension of time.
In addition, we welcome IPOS’ efforts to strongly encourage dialogue between the parties in favour of an amicable settlement which reduces substantially the number of opposition proceedings that reach the hearing stage.
Singapore is highly committed to IP rights protection and continues to be a thought-leader in the IP landscape. Read our article to learn why Singapore is top in Asia for Intellectual Property Rights protection.
At IPHub Asia, we specialise in trademark and design protection in Asia, with a strong focus on Southeast Asia. If you have any questions about the trademark opposition proceedings in Singapore or have other IP-related queries, please get in touch.
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