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Trade Marks Journal No. 040/2010
Page No. xxviii
Application to Register a Licensee (TM 37) (Circular No. 24/2007, dated 29 June 2007)
(i) Processing Of An Application To Register A Licensee (TM 37)
An application to register a licence (Form TM 37) filed on or after 2/7/2007, will be
processed by the Registry even though the status of the mark is still pending registration.
However where the application to register a licence (Form TM 37) was filed before
2/7/2007, it will be processed only after the mark has been registered.
(ii) Licence Commencement Date
The licence commencement date (i.e. the date entered in Part 5 of TM 37) should not
predate the date from which the proprietor’s rights in the mark accrue. For a trade mark
application filed before 1/7/2004, the earliest licence commencement date is the trade mark
application date or the priority date, if any. For a trade mark application filed on or after
1/7/2004, the earliest licence commencement date is the trade mark application date.
(iii) Exclusive Licence Periods Do Not Overlap
Where there are 2 exclusive licences or more, the licence periods involving the same goods
or services should not overlap.
(iv) Licensed Goods/Services Should Not Be Wider Than Trade Mark
Application/Registration
The list of licensed goods or services (Annex of TM 37) should not be wider than those
under the trade mark application/registration.
Deficiencies in applications for registration : amendments after filing (Circular No.
28/2007, dated 27 July 2007)
The Registrar has been conducting formalities check on all applications for registration to
ensure that they contain all formal requirements under the Trade Marks Act.
Where the application does not comply with the requirements which are essential for a filing
date to be accorded, the filing date will not be accorded until all the deficiencies have been
rectified. In such cases, the application will be accorded the earliest date on which all
essential requirements for filing date are complied with. There is no need for the correction
to be accompanied by the relevant amendment form. The essential requirements for filing
date are spelt out in section 5(2) and (3) of the Trade Marks Act.
In respect of other deficiencies or irregularities that do not affect the filing date,
amendments must be effected through the lodgement of the relevant trade mark forms,
such as Form TM 27A, Form TM 27B and Form TM 26.
This practice pertains only to new applications filed with effect from 01 August 2007.