Readmore - Intellect Worldwide Sdn Bhd

Trade Marks Journal No. 040/2010
Page No. lxvi
Service of Form TM 11 (Notice of Opposition) and Form TM 28 (Application for
Revocation / Declaration of Invalidity / Rectification) (HMD Circular No. 4/2009, dated
20 November 2009)
Service of Form TM 11 and Form TM 28 is regulated under Rule 29 and Rule 57 of the
Trade Marks Rules 2008 Rev. Ed. (TMR) respectively.
Rule 29(2) provides that the opponent shall serve on the applicant a copy of the notice of
opposition at the same time as the notice of opposition is filed with the Registrar.
Rule 57(3) provides that the applicant for revocation / declaration of invalidity / rectification
shall, if he is not the proprietor of the registered trade mark, serve a copy of the application
and the statement of grounds on which the application is based on the registered proprietor
at the same time as he files the application and statement of grounds with the Registrar.
For the purpose of ensuring compliance with the above Rules, the opponent / applicant is to
indicate clearly, on the cover letter enclosing the notice of opposition or application for
revocation / declaration of invalidity / rectification to the Registrar, that a copy of Form TM
11 or Form TM 28, as applicable, has been served on the applicant / registered proprietor.
Failure to do so will be taken as non-compliance with Rule 29(2) or Rule 57(3) respectively.
Accordingly, the Registrar will treat the case as no proper service of Form TM 11 and Form
TM 28 respectively, unless the opponent / applicant proves otherwise.
In such an event, Form TM 11 / Form TM 28 will be rejected as non-compliant. The
opponent / applicant will have to re-file Form TM 11 / Form TM 28 afresh and serve the
same on the applicant / registered proprietor.
In relation to Form TM 11, in the event that the notice of opposition cannot be re-filed as the
2-month or 4-month maximum time period has expired, the prospective opponent will then
have to consider filing for invalidation after the mark has been registered.
Service of Form TM 12 (Counter-statement) (HMD Circular No. 5/2009, dated 20
November 2009)
Service of Counter-statement for opposition is regulated under Rule 31 of the Trade Marks
Rules 2008 Rev. Ed. (TMR) and service of Counter-statement for an application for
revocation / declaration of invalidity / rectification is regulated under Rule 58 of the TMR.
Rule 31(2) provides that the applicant shall serve on the opponent a copy of the Counterstatement
at the same time as it is filed with the Registrar.
Rule 58(2) provides that the registered proprietor shall serve on the applicant a copy of the
Counter-statement at the same time as he files the Counter-statement with the Registrar.
For the purpose of ensuring compliance with the above Rules, the applicant / registered
proprietor is to indicate clearly, on the cover letter enclosing Form TM 12 to the Registrar,
that the same has been served on the opponent / applicant. Failure to do so will be taken
as non-compliance with the Rules. Accordingly, the Registrar will treat the case as no
proper service of Form TM 12.
In such an event of non-service, and provided that the irregularity would not result in a
detriment to the other party that cannot be remedied, the Registrar would generally,
pursuant to Rule 83, exercise her discretion to direct that the procedural irregularity be