A Guide to opposing Trademarks in Singapore

Once a trademark application has passed the substantive examination, it is published in the local trademark gazette for 2 months for opposition purposes. An interested party would be able to file an opposition to challenge the registration of the mark during this period.

We have broken down the steps of the Trademark opposition process in Singapore below:

Submission of opposition by the opponent
This submission includes a statement of the grounds of opposition, submitted in writing together with Form TM11 and the payment of the official fees before the opposition deadline. A copy of this notice will be served to the other party similar to other communication, failing to do so will result in an invalid opposition.

Submission of counter-statement by the applicant
The applicant has 2 months after opposition has been filed to file a counter- statement. Failing to do so will result in the withdrawal of the application with respect to the opposed class(es) – and thus end the opposition procedure. The applicant’s submission should include all the allegations included in the Notice of Opposition and identify the nature and scope of the grounds which the applicant relies on.

Mediation: suspension of the trademark opposition
After submitting the counter-statement, the opposition proceedings are suspended to encourage the parties to negotiate for a settlement and reach an amicable outcome. This was introduced to promote time and cost saving alternative to having to go through a hearing. This stage is compulsory but the parties can request for a mediation at any time.

If the dispute is resolved at this stage the parties will inform the duty officer about the outcome of the negotiation in writing.

Case Management Conference
If during the mediation, the parties are unable to reach a settlement, as stated under Rule 81A of the Trade Marks Rules, the Registrar will organise a Case Management Conference (CMC). The CMC gives the examiner the opportunity to discuss the dispute with the parties and explore the possibility of an amicable settlement. If an agreement is not reached, the duty officer will then issue timelines for the filing of evidence.

Parties submitting statutory declarations
This is an extremely important step in the process because on top of repeating the grounds that both parties have established, both parties have to submit all necessary documents and evidence and review what the other party’s grounds. The opponent is also allowed to counter-argue the applicant’s submission. After the given 3 month deadline, and any extensions granted no evidence can be submitted unless authorised or allowed by the officer.

If opposition fails to filed the declaration their opposition is considered as withdrawn and likewise if the applicant fails to do so the mark’s application with lapse.

After the parties have filed all the evidence, they will be directed to attend a pre-hearing review. During which the officer will consider any number of matters and raise the possibility of a settlement. If said settlement does not occur the parties will be notified of the date of their hearing. The parties will then have to file written submissions and bundles of authorities and then exchange with one another the respective documents a month before the date of hearing.

Decisions, appeals and taxation

IPOS will give its decision within 3 months but this decision is not final as both parties have the opportunity to appeal within 28 days before the High Court. After the decision is issues, the cost will be typically awarded to the winning part and the parties should try to come to an agreement on the sum between themselves. If they cannot agree, the winning party can apply for a taxation hearing which is done by filing for a bill of costs in the Bill of Cost Form within 1 month from the date of the decision.

For more information, please head to the IPOS website.

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