Trademark oppositions in Singapore are governed by Intellectual Property Office of Singapore (IPOS) under Section 13 of the Trade Mark Act, 1998 and Division 6 under the Trade Mark Rules.
- Filing Notice of Opposition – A person or entity can file a notice of opposition against an application within 2 months from the date of its publication in the Trade Marks Journal. The opponent is also required to send a copy of the opposition notice to the applicant at the time of filing it with IPOS. Failure to do so would render the opposition ineffective i.e. the opposition will be treated as not having been filed.
The deadline to file opposition is extendable by a period of additional 2 months. - Filing of Counter Statement – The applicant is required to file a counter statement within 2 months from the date of receipt of the copy of opposition notice served by the Opponent. The applicant is also required to send a copy of the counter statement to the opponent at the time of filing it with IPOS. Failure to do so would result in treating the application as withdrawn.
The deadline to file counter statement is extendable by a period of additional 2 months. - Invitation for Dispute Resolution – Once the counter statement is filed, the opposition proceedings are suspended and the IPOS sends a letter to the parties to encourage them to explore dispute resolution options. Within one month of received the letter, both the parties are required to file a Notification to Registrar form copying the other party.
The deadline to file Notification to Registrar is extendable by a period of additional 1 month.
Once the parties express their intention to mediate, the IPOS suspends opposition proceedings. The parties may set aside 30, 60 or 90 days for mediation which can be extended upon further request by the parties.
After the mediation proceedings are concluded, the parties must inform the IPOS about its outcome within 2 weeks.
Notwithstanding this provision, the parties can file a request for mediation at any time after the counter statement is filed and before the outcome of the case is decided. - Submission of Evidence – If the mediation is unsuccessful or there are any remaining issues in the dispute, the IPOS resumes the proceedings. The parties are heard and deadlines for filing the evidence are specified by IPOS. The parties are then required to file their respective evidences in the form of Statutory Declarations with IPOS and serve a copy of the Statutory Declaration to the opposite party simultaneously. If any of the parties fails to file their evidence or serve the same on the opposite party, it will result in their opposition / application being treated as withdrawn. The Opponent also has the option to file their evidence in reply to the applicant’s evidence.
The deadline to file evidence in support of opposition, application or evidence in reply can be extended by making a request to the IPOS stating the period of extension requested. - Pre-review Hearing – Once the evidence stage is concluded, the IPOS may ask the parties to attend a pre-hearing review. This hearing is held in case the Registrar considers the possibility of settlement of any or all of the issues in the proceedings and may require the parties to furnish him with such information as he may require.
- Hearing – Upon completion of the evidence stage, the IPOS will schedule a hearing and notify the parties. At least one month before the hearing date, both the parties are required to file their written submissions with IPOS and serve a copy of the same on the opposite party. Any party who intends to appear at the hearing shall file with the Registrar Form HC1 along with applicable fee, before the hearing. If neither party appears at the hearing, the Registrar may dismiss the proceedings.
- Decision & Order – After hearing the parties, the Registrar issues a decision and the grounds of the decision.
Appeal to Decision of the Opposition
In an event that any party is unsatisfied with the decision of the Registrar, an appeal can be filed with General Division of the High Court within 28 days from date of the Registrar’s decision.
For more information on trademark opposition in Ukraine, please write to us at foreign.opp@ssrana.com