[Singapore Update] New IP Filing System, Amendments of IP Legislation and New Official Fees: From the Trademark Perspective

By Amir Murshidi

As highlighted in previous updates, the Intellectual Property Office of Singapore (IPOS) issued a circular on 11 March 2022 with regard to a new IP filing system, amendments of legislation and changes in official fees. We’ve looked at what this holds for patent procedures in Singapore – now let’s take this in from a trademark and design vantage point.

The New IP Filing System

Based on a further circular dated 28 April 2022, the new IP filing system, called IPOS Digital Hub is expected to debut on 2 June 2022 and will replace the existing online filing platform, IP²SG. IPOS Digital Hub is aimed at enhancing users experience with its new functions and features. IP²SG will be decommissioned on 25 May 2022.

Amendments of IP Legislation

IPOS has announced that the Patents Act, Trade Marks Act, Registered Designs Act and Plant Varieties Protection Act will be amended pursuant to the Intellectual Property (Amendment) Act 2022. The amendments will come into effect on 26 May 2022.

Among the notable changes on trade marks and registered designs legislations include:

Trade Marks:

Partial acceptance mechanism for national trade mark applications is now available. This will allow goods/services which have not been objected to, to proceed further to registration. If no response is filed against the objection, only the objected goods/services will be “Treated as Withdrawn”. However, if a response is filed but the objection is maintained, the Applicant may apply for an ex-parte hearing. Should the decision not be in the Applicant’s favour, only the objected goods/services will be “Refused” while the rest will be registered.
Replacement of the reinstatement measure for applications that become “Treated as Withdrawn” with a new post-deadline relief measure, “continued processing”. The Applicant will only have 2 months to file a request for the continued processing of the trade mark application from the date it becomes “Treated as Withdrawn”. This will replace the current 6-month window to request for reinstatement.
The Registrar may now exercise his discretion to publish a request for correction (change of name and other particulars, priority details, etc.) for opposition purposes.
For claiming priority, it is mandatory to provide the application number of the priority application within 3 months from the Singapore filing date (non-extendable deadline).
Discontinuation of reinstatement measure for matters concerning peripheral forms such as registrable transaction, renewal, and appointment, change or removal of an agent.

Registered Designs:

Registered design applications relating to claim to right of priority, surrender of registration and false representation of a design can now be made in respect of sets of articles and non-physical products.
A disclaimer in relation to specified feature(s) is now possible.
The period to request for reinstatement of an application, right or thing that becomes Treated as Withdrawn, or has been abrogated or ceased to be in force or to exist will be reduced from 6 to 2 months.
The Registrar may exercise his discretion to publish a request for correction (change of name, priority details, etc.) for opposition purposes.
For claiming priority, it is mandatory to provide the application number of the priority application within 3 months from the date of the Registrar’s request (extension of time is possible).
Discontinuation of reinstatement measure for matters concerning peripheral forms such as registrable transaction, renewal, and appointment, change or removal of an agent.

Changes in Official Fees

Beginning 26 May 2022, new official fees will also be introduced for certain trademark and registered design matters, particularly for filing a new trademark application, renewal and restoration of trademark, amendment of trademark, application to register an international registration and filing a new design application. There will be an increase of 11% – 16% for trademark matters while the official fee for filing a design application will be reduced by 20%.

Do contact us at kass@kass.asia if you require our updated fees reflecting the new official fees.

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.