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Filing of Proprietor’s Evidence of Use in Trade Mark Revocations.

 

3 October, 2011
 
The Hearing and Mediation Division of the Intellectual Property Office of Singapore (“IPOS”) has recently issued a Circular relating to the filing of evidence of non-use in trade mark revocation proceedings and the proprietor’s obligation to file evidence.
 
In a typical trade mark revocation action, should the trade mark proprietor wish to defend his trade mark registration, he is obliged under Rule 58(3) of the Trade Marks Rules to file evidence of use together with his Counter-statement.
 
Such evidence is to be filed by way of a statutory declaration under Rule 69(1) which makes it clear that in any proceedings before the Registrar, evidence shall be given by way of a statutory declaration, unless otherwise provided by legislation or directed by the Registrar. However, if the proprietor intends to defend his trade mark by giving reasons for non-use, the proprietor merely needs to give reasons for non-use in his Counter-statement.
 
In terms of the extent of evidence which the proprietor should provide at the Counter-statement stage, the Circular has clarified that “the proprietor is only required to show that he has an arguable case”. Accordingly, it would appear that the evidence does not need to amount to proof of use and it would be possible to file more detailed evidence at a later stage in the proceedings.
 
As a matter of best practice, the Circular recommends that the proprietor’s evidence should comprise material showing the trade mark in use, for example, on catalogues, product labels, advertisements, as well as some indication of sales of products bearing the trade mark.
If the proprietor does not comply with the requirement to file evidence of use by way of a statutory declaration, the application for revocation will be granted under Rule 59(1) of the Rules. The proprietor’s trade mark will then be revoked.
 
As the past practice accepted Counter-statements where the proprietor’s evidence of use was not filed by way of a statutory declaration, IPOS is granting a grace period until 31 October 2011 for proprietors to adjust to the change set out in the Circular.
In the situation where a Counter-statement is filed during this grace period, and where the proprietor’s evidence of use is not filed by way of a statutory declaration, the Registrar will direct the proprietor to re-file the evidence as a statutory declaration so that proceedings may continue.
 
From 1 November 2011 onwards, this grace period will lapse, and the Registrar will apply Rule 59(1) of the Rules to grant a revocation application where the Counter-statement is filed in the absence of evidence submitted by way of a statutory declaration.
 
 
By Terri Koh

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