How to Revoke Another Business’ Trade Mark for Non-Use So You Can Register Your Own

Say your business seeks to register a trade mark in Singapore, but realises that a third-party has already registered an identical or similar-looking trade mark. Your business nevertheless intends to proceed with the registration of its mark while avoiding a claim by the third-party for trade mark infringement. To do so, the registration of the third-party’s trade mark will first have to be revoked.

Revoking a Trade Mark on the Ground of Non-Use

The key ground on which your business may mount a revocation action in such a situation is that of non-use under section 22 of the Trade Marks Act. When proceeding on the ground of non-use, your business has to prove that:

• The third-party has not genuinely used its trade mark in the course of trade in Singapore within 5 years from the date of registration of its trade mark, and that the third-party can offer no proper reason for the non-use of its trade mark; or
• The third-party has not used its trade mark for an uninterrupted period of 5 years, and that the third-party can offer no proper reason for the non-use of its trade mark.

In Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v Qinghai Xinyuan Foreign Trade Co Ltd, the Court of Appeal appears to suggest that a trade mark registration must be revoked once a ground of revocation has been established. In other words, the court has no discretion to not revoke a trade mark once a ground of revocation has been established. However, whether this is so has not been settled in Singapore yet.

Procedure for Applying to Revoke a Trade Mark for Non-Use

The procedure for applying to have a trade mark revoked can be summarised as follows:

• Filing of Application
• Third-Party’s Filing of Counter-Statement
• Completion of Notification to Registrar Form
• Filing of Evidence
• Requesting for Extension of Time (If Required)
• Pre-Hearing Review
• Preparation for Hearing
• Dealing with Post-Hearing Matters

All the forms mentioned in this article (except for those relating to filing of evidence, written submissions and bills of cost) may be downloaded from the website of the Intellectual Property Office of Singapore (IPOS) Digital Hub website.

Filing of Application

To revoke the registration of a trade mark in Singapore, your business must first file an application for revocation with IPOS via the IPOS Digital Hub website.

The Application for Revocation/Invalidation/Rectification Form must be accompanied by a statement of grounds stating in detail the reasons why the trade mark should be revoked.

As your business is alleging the third-party’s non-use of the trade mark, the onus will fall on the third-party to establish that it has used its trade mark in the relevant period your business has alleged, or that there are proper reasons for such non-use.

In addition, your business must make payment of S$357.00 x the number of classes for which the revocation of trade mark is sought, and must send copies of the application form and statement of grounds to the third-party.

Third-Party’s Filing of Counter-Statement

If the third-party intends to contest the application, it must file a Counter-Statement Form within 2 months after the date of receipt of copies of the application and statement.

The Counter-Statement Form should comprise the grounds that the third-party relies on to support its trade mark registration, the facts asserted in your business’ revocation application that it admits (if any), as well as a statutory declaration stating evidence that shows its use of the trade mark.

Acts that are likely to constitute use of the trade mark are:

• The application of the trade mark to goods or packaging
• The sale of goods or supply of services under the trade mark
• The import or export of goods under the trade mark
• The use of the trade mark on an invoice, catalogue or other commercial document
• The use of the trade mark in advertising
• The use of the trade mark on promotional products

Additionally, the third-party must make payment of S$360.00 x the number of classes for which the revocation of the trade mark is sought, and must send copies of its filed documents to your business.

Completion of Notification to Registrar Form

After the filing of the Counter-Statement, both your business and the third-party will receive a Notification to Registrar Form. This form is to be completed and submitted to IPOS within 1 month of the filing of the Counter-Statement.

The Notification to Registrar Form will include a Request for WIPO Mediation Form, which is for the parties to indicate whether they would like to resolve their dispute through mediation.

If both parties refuse to mediate or do not succeed in reaching a consensus during mediation, the Registrar will instruct parties on how the case will proceed, as well as the deadlines for both parties to file their evidence, either in writing or in a Case Management Conference.

Filing of Evidence

As your business is alleging the third-party’s non-use of its trade mark, it need not adduce any evidence at this juncture.

However, if it is also relying on grounds other than non-use in its revocation application, it must file a statutory declaration stating the supporting evidence it will be relying on in the Evidence by Initiator Form by the deadline provided by the Registrar. In such an instance, your business is required to send a copy of the statutory declaration to the third-party.

The third-party is then entitled to file a statutory declaration in the Evidence by Respondent Form stating the evidence that it seeks to rely on to support its case. A copy of the form will be sent to your business simultaneously.

Thereafter, your business may file a statutory declaration in the Evidence-In-Reply by Initiator Form within the given deadline to reply to certain matters raised in the third-party’s statutory declaration. Your business will also be required to send a copy of this statutory declaration to the third-party.

Requesting for Extension of Time (If Required)

Any party to the revocation proceedings may request for an extension of time at any point of the proceedings. The procedure is as follows:

• File a Request for Extension of Time Form with IPOS within the deadline provided by the Registrar. This form has to state, among other things, the reason(s) for requesting an extension.
• Make payment of S$100.00 x the number of classes for which the revocation is sought.
• Send the Request for Extension of Time Form to all parties likely to be affected by the extension, including the other party to the proceedings.

Pre-Hearing Review

Subsequent to the filing of evidence by both parties, the Registrar may require the parties to attend a pre-hearing review.

During this review, the Registrar may explore the option of settlement between the parties and may ask both parties to provide further information on certain matters.

Preparation for Hearing

After the Registrar informs both parties of the hearing date, the parties will have to prepare for the hearing by:

• Filing their written submissions and bundles of authorities (e.g. statutes, cases) that they intend to rely on in the Written Submissions & Bundle of Authorities Form at least a month before the hearing date;
• Exchanging their respective written submissions and bundles of authorities at least a month before the hearing date; and
• Filing a Notice of Attendance at Hearing Form (together with payment of S$715.00) before the hearing to indicate that they intend to be present at the hearing.

Dealing with Post-Hearing Matters

Decision

After the hearing, the Registrar will notify the parties of its decision and the grounds for it as soon as practicable.

If the Registrar decides that the ground of non-use applies only for some of the goods or services for which the third-party’s trade mark is registered, then the trade mark will only be partially revoked with regard to those goods or services.

Appeal

Should your business intend to appeal the Registrar’s decision, it will have to file the appeal with the General Division of the High Court within 28 days of the decision.

Costs

Costs of the hearing are usually awarded to the winning party, and parties are encouraged to agree between themselves on the sum to be paid. However, if an agreement cannot be reached, the party entitled to costs may file a Bill of Cost Form within 1 month from the date of decision for a taxation hearing. A copy of the form should also be served on the other party at the same time.

If the other party objects to the sum proposed, it may file a Marked Bill of Cost Form within 1 month after receipt of the Bill of Cost Form.

At the taxation hearing, the Registrar will award costs based on the Scale of Costs found in the Fourth Schedule of the Trade Mark Rules. The party entitled to costs will thereafter file a Request to Extract Registrar’s Certificate of Taxation Form (together with payment of S$80.00 x the number of classes for which revocation is sought) to obtain a taxation certificate that is enforceable in court.

Effects of revocation

If your business succeeds in revoking the third-party’s trade mark, the third-party’s rights in the trade mark will be taken to have ended on either the date of the application for revocation, or an earlier date (if the Registrar or Court is satisfied that the ground(s) for revocation were valid as of this earlier date).

After this date has passed, your business can then apply to register its trade mark to the extent that the third-party’s trade mark has been revoked. Should the application be granted, your business is encouraged to use the mark in the course of trade in Singapore. This is to preclude a third-party from applying to revoke your business’ registered trade mark for non-use 5 years later.

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Parties requiring the services of a trade mark lawyer to assist them with the revocation of registration of a third-party’s trade mark for non-use may get in touch with one of our experienced trade mark lawyers.