How much will it cost me to file Form TM11?
Usually 2 months after
the date that the initial 2 months expire. The maximum time allowed is 4 months
after the date of receipt of the Notice of Opposition. [R 31(5)]
A CMC is a
meeting between the parties and the Registrar, conducted under Rule 81A of the
Trade Marks Rules, for the Registrar to make orders or give directions for the
just, expeditious and economical disposal of the matter at hand.
Counter-Statement is filed, if parties indicate in the Notification to
Registrar that they have not communicated with each other, the Registrar will
most likely convene a CMC for parties to communicate with each other. Parties
will update the Registrar on the state of play between them. Depending on the
circumstances of the case, the Registrar will issue timelines for the filing of
evidence by both parties. For example, if there are several issues in dispute,
parties are based overseas and are negotiating, the timelines given may be
longer than in another case where there are fewer issues in dispute, the
parties are based in Singapore and are not negotiating.
A CMC allows
both parties and the Registrar to discuss the conduct of the case. It also provides parties an opportunity to
engage each other on the possibility of settlement.
At the CMC, you
will benefit from a clearer understanding of the advantages of mediation (see
FAQs under “Mediation” below) with the WIPO Arbitration and Mediation Center and
how this may help you reach a win-win solution with the other party in your
will also issue timelines for both parties to file evidence. With this, you can
better manage your time and balance the need to negotiate and make preparations
to file evidence as it becomes due.
For parties who inform the
Registrar that they cannot or do not want to settle, the timelines will be
shorter so that they can resolve their dispute at a full hearing earlier.
common, default mode of a CMC is by teleconference. This generally saves
parties time and cost as compared to attending a CMC in-person at IPOS.
CMC can be requested by parties, or initiated by the Registrar for complex
cases or cases where an in-person meeting is more conducive for discussion or
Before the CMC, you should have contacted the other party to explore the possibility of settlement. At the CMC, you should be prepared to discuss the case. You should be in a position to advise the Registrar whether there is a possibility of settlement through negotiation or mediation. If the parties have not explored the possibility of settlement, the Registrar will encourage them to do so. You should be able to inform the Registrar of relevant circumstances, for example, if the matter is one of a series of actions worldwide between the same parties such that the parties are already coordinating a global settlement plan; or if the matter is a longstanding dispute where negotiations have failed and the parties wish the Registrar to make an expeditious determination of the matter at hand.
The Opponent must file with the Registrar his evidence in support of his Opposition by way of a Statutory Declaration (SD) within 3 months after the date of receipt of the Counter-Statement. [R 32(1)]
After that, the Trade Mark Applicant must
file with the Registrar his evidence in support of his application by way of an
SD within 3 months after the date of receipt of the Opponent’s SD. [R 33(1)]
As an Opponent,
you may request for an extension of time to file the SD by filing Form HC3
within 3 months after the date of receipt of the Counter-Statement. [R 32(4)]
You also need to inform the Applicant that you intend to request for an
extension of time and ask the Applicant for his consent to the extension of
time. [R 32(7a,b & 8)] The extension of time the Registrar may allow to
file the SD shall not exceed 6 months after the date of receipt
of the Counter-Statement from the Applicant. [R 32(5)] Any further request for
an extension of time to file the SD shall be made to the Registrar by filing Form
HC3 with a fee of S$100 x number of classes before the expiry of the last
extended period allowed by the Registrar. [R 32(6)]
As an Applicant, you may request for an extension
of time to file the SD by filing Form HC3 within 3 months after the date of
receipt of the Opponent’s SD. [R 33(4)] You also need to inform the Opponent
that you intend to request for an extension of time and ask the Opponent for
his consent to the extension of time. [R 33(7a,b & 8)] The extension of
time the Registrar may allow to file the SD shall not exceed 6
months after the date of receipt of the Opponent’s SD. [R 33(5)] Any
further request for an extension of time to file the SD shall be made to the
Registrar by filing Form HC3 with a fee of S$100 x number of classes
before the expiry of the last extended period allowed by the Registrar. [R
If, as an Opponent, you do
not file any evidence in support of your opposition, the application will
proceed to registration and the Certificate of Registration will be issued to
the Applicant. [R 32(3)]
If, as an Applicant, you do not file any
evidence in support of your application, the application will be treated as
withdrawn. [R 33(3)]
The Opponent can
choose not to reply to the Applicant's SD, if he does not have anything new to
say in response to the Applicant's evidence. The opposition will proceed to a
However, the Opponent may also choose to file
his evidence in reply to the Applicant's SD within 3 months after the date of
receipt of the Applicant's SD. [R 34(1)]
After this, the opposition will proceed to a Pre-Hearing Review.
Is there any form which I must file together with the SD?
A PHR is a meeting between the parties and the Registrar conducted under
Rule 36A of the Trade Marks Rules. The Registrar will ascertain from the
parties whether there is any possibility of settlement or whether they wish to
proceed to an Opposition Hearing.
If the parties are exploring settlement, the Registrar will give them
time to do so.
If the parties wish to proceed to an Opposition
Hearing, the Registrar will raise any relevant issues which need to be resolved
before an Opposition Hearing. The Opponent will also have to confirm the
grounds of opposition on which it is proceeding, so that both parties have a
common understanding on the grounds to address in their submissions.
Where both parties agree to mediate, both
parties jointly complete one Request
for WIPO Mediation. Either party sends the Request for WIPO Mediation to
the WIPO Center Office in Singapore by email (firstname.lastname@example.org), as well
as to the other party and IPOS. The WIPO Center will contact the parties about
the next steps of the mediation procedure, the appointment of the mediator and
the mediator's fees.
If you wish to propose mediation to the other
party, you can complete sections 1, 2 and 3a of the Request
for WIPO Mediation then send the Request for WIPO Mediation to the WIPO
Center Office in Singapore by email (email@example.com), as well as to the
other party and IPOS. The WIPO Center will approach the other party to help
them in considering the Request for WIPO Mediation.
Parties have one month from the receipt of the Notification to Registrar to decide whether to submit to mediation. Each party will complete and sign its own Notification to Registrar to inform the Registrar of its decision concerning the conduct of the dispute. Parties may wish to note that from the time the Counter-Statement is filed, the proceedings at IPOS are suspended to allow both parties to consider mediation as a viable alternative to resolving their dispute, without time pressure.
Parties should note that they can still submit to mediation later on in the opposition as long as the Registrar has not issued his decision.
That depends on whether the mediation is successful or not.
(i) If parties fully settle their dispute, and if the settlement affects
the trade mark application or registration in any way, the trade mark applicant
/ proprietor would have to comply with the relevant procedure to withdraw or
amend the trade mark application or cancel the trade mark registration. In all
cases, the initiating party has 2 weeks from the end of the mediation to inform
IPOS in writing that the matter has been settled and parties will have to take
the necessary steps to close the proceedings before IPOS.
What is the Mediation Promotion Scheme?
The Mediation Promotion Scheme is launched by the Intellectual Property
Office of Singapore (IPOS) to fund parties’ mediation costs (administration fee
and mediator’s fee) incurred with any mediation service provider, up to S$5,500
per mediation case.
The Mediation Promotion Scheme encourages
parties in IPOS proceedings to choose mediation by funding the process, so that
more can experience mediation as an attractive alternative to a hearing at IPOS
for resolving their disputes satisfactorily.
The Mediation Promotion Scheme will be available from 1 April 2016 until
31 March 2019 for an estimated 30 cases.
Through positive experiences with mediation as
facilitated under the Mediation Promotion Scheme, we hope that the parties in
IPOS proceedings will eventually choose the mediation option even without
Parties with proceedings that are pending at IPOS from 1 April 2016 may
apply after the mediation takes place in Singapore.
The parties must meet the three conditions below:
disclose any agent fees incurred from the start to
the end of the IPOS proceedings
ii) give feedback on their mediation experience
iii) minimally allow a “shadow” mediator to sit in
and observe the mediation.
If submitting to mediation right after close of pleadings, each party
indicates in the Notification to Registrar that it wishes to submit the dispute
in the IPOS proceedings to mediation and intends to apply for funding of
If submitting to mediation before the close of pleadings or after the
Notification to Registrar has been filed earlier, each party informs the
Registrar in writing that it wishes to submit the dispute in the IPOS
proceedings to mediation and intends to apply for funding of mediation costs.
A request for mediation is submitted to the chosen mediation service
provider and copied to IPOS.
Before the mediation, the parties consent to and the mediation service
provider arranges for minimally a “shadow” mediator to sit in and observe the
Parties participate in the mediation, with the mediator and minimally a
Within 1 month from the date of the invoice from the mediation service
provider, each party separately submits a completed MPS
application form to IPOS, with the supporting documents.
Upon successful application, each party receives
reimbursement of the mediation costs from IPOS, up to a combined total of SGD
5,500 per mediation case. Each party will receive an equal share of up to SGD
2,750 unless otherwise agreed by the parties involved.