Official fee changes
With effect from December 1 2011, in order to cover increased operating costs, IPOS revised some of its official fees in respect of trade marks, patents and designs.
The increases were by between 10%-15 % and affect principally matters such as trade mark registration fees, fees for patent searches and examinations, and also Singapore extensions of international patent applications.
Form changes
Also effective as of December 1 2011, and intended to apply in relation to hearings in inter partes patent matters, IPOS has introduced a new Form PF40A. This is aimed at standardising the procedures for hearings of issues of a substantial nature.
Trade marks – classification
On January 1 2012, the 10th Edition of the Nice Trademark Classification came into effect and all trade mark applications filed with IPOS from that date must comply with the 10th Edition.
The 9th Edition will continue to apply to applications filed before January 1 2012 and there will be no reclassification of either goods or services for those existing applications when the new classification comes into force, but IPOS will ensure that appropriate cross-class searching is undertaken.
Trade marks – revocation
IPOS has clarified its practice regarding trade mark revocation actions based on non-use by confirming that for such actions defended by pleading use, trade mark proprietors are required to support their defence by showing their use of their marks, when filing their counter-statement, by a sworn statutory declaration. Counter statements specifying details of use but without such declaration will no longer be accepted.
Following this practice update, there was a grace period (May 1 2011 to October 31 2011) within which a proprietor could re-file his evidence of use by way of statutory declaration if not previously done, failing which the revocation application would be granted and the trade mark revoked. After this grace period, the updated practice applies to grant revocation applications if the statutory declaration requirement is not complied with at the counter-statement filing stage.
WIPO and IPOS dispute resolution procedure
The World Intellectual Property Organization (WIPO) and IPOS have been collaborating on a joint dispute resolution procedure for the mediation of IP disputes that have been filed with IPOS.
The memorandum of understanding establishing the framework for collaboration was signed by the chief executive of IPOS and the director-general of WIPO in Geneva on September 28 2011. The procedure is intended to facilitate the mediation process of IP disputes involving ownership and validity of intellectual property under the WIPO Rules, as administered by the WIPO Centre Office in Singapore.
Pursuant to this initiative, IPOS has so far introduced a new procedure for all trade mark opposition, invalidation and revocation proceedings before IPOS. This new procedure, which offers a voluntary mediation option to parties, will apply to all trade mark proceedings from January 3 2012. Parties may submit to mediation at the WIPO Center Office in Singapore at any stage. The proceedings may be suspended for agreed periods and if settled, the parties are to take the necessary action to effect closure of the IPOS proceedings.
Integrated IT platform
To further enhance the electronic platforms of ePatents, eTrademarks and eDesigns and online filing, IPOS is developing an integrated IT platform to provide a faster and more streamlined user experience across all three registries including aspects of the hearings phase. Roll-out is expected by the end of 2012.
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| Kevin Wong
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Philip Woods
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Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
152 Beach Road, #30-00 Gateway East
Singapore 189721
Tel: +65 6333 7200
Fax: +65 6333 7222
mail@ecsf-asia.com
www.ecsf-asia.com