Readmore - Intellect Worldwide Sdn Bhd

More documents

Recommendations

Info

Trade Marks Journal No. 040/2010 Page No. lxix (v) (vi) (vii) whether the amendment raises grounds or facts which the applicant need not set out in reply, for example, the ground was not raised by the opponent and is therefore inapplicable to the particular proceedings at hand the substantiality of the amendment the stage of the proceedings the amendment is sought. If leave to amend is granted, the Registrar may issue such necessary directions on the subsequent procedure as is deemed fit, including but not limited to adjourning the case, allowing amendments to be made to the Counter-Statement by the other party, granting extensions of time for the filing of further evidence by both parties as well as awarding such costs as may be just against the party seeking the amendments. Using Form TM 28 for Two or More Different Types of Actions (HMD Circular No. 3/2010, dated 20 August 2010) Form TM 28 is used for 3 different types of actions: (iv) (v) (vi) Application for revocation of registration of a trade mark (Rule 57(1)(a) of the Trade Marks Rules 2008 Rev Ed (“TMR”)) Application for declaration of invalidity of registration of a trade mark (Rule 57(1)(b) of the TMR) Application for rectification of the register by persons other than the proprietor of the trade mark (Rule 57(1A)(b) of the TMR) As each type of action is different in that different grounds are applicable, one Form TM 28 is required for each type of action (revocation / invalidation / rectification) pursued in relation to a trade mark. Thus, should the applicant for invalidation / declaration of invalidity / rectification seek to institute two (or three) different types of actions in relation to a trade mark, two (or three) Form TM 28’s are to be filed accordingly. In the event that two (or three) different types of actions are indicated in one Form TM 28, the form will only be considered to be relevant for one of the actions for the particular trade mark. This means that should the applicant for invalidation / declaration of invalidity / rectification still wish to pursue the second (or third) action(s), he will be required to file another Form TM 28 with the consequent costs and filing date implications. For avoidance of doubt, the above does not affect the existing cost calculation for Form TM 28, which is on a per class basis.
Trade Marks Journal No. 040/2010 Page No. lxx Dealing With Extensions of Time and Case Management Conference Timelines (HMD Circular No. 4/2010, dated 20 August 2010) To better manage trade mark opposition, invalidation and revocation proceedings, the Registrar has, at case management conferences (CMC) convened under Rule 81A of the Trade Marks Rules 2008 Rev Ed, been issuing timelines for the filing of evidence by both parties. The primary objectives are to ensure that the parties explore the possibility of a settlement through negotiations and that all parties have the same expectations on the amount of time given to each party for the filing of evidence. This circular sets out the Registrar’s practice in relation to extensions of time for filing evidence and the application of CMC timelines. Fast-Track and Slow-Track CMC Timelines Timelines issued through CMCs are generally of two types – slow-track and fast-track. Slow-track timelines are issued in cases where parties are already exploring or are intending to explore the possibility of settlement through negotiations. In such cases, the objective of issuing a longer timeline for the party initiating the action to file his evidence is to allow parties sufficient time to negotiate and reach an amicable settlement. In other cases, fast-track timelines will be issued. This table sets out typical timelines for slow-track and fast-track cases: Evidence of initiating party Evidence of responding party Slow-Track Timelines 14 months from Counter- Statement 6 months from evidence of initiating party Fast-Track Timelines 8 months from Counter- Statement 6 months from evidence of initiating party These CMC timelines represent the maximum extent to which the Registrar will generally exercise her discretion in granting extensions of time to parties and they are predicated on the appropriate requests for extensions of time being made. Extensions of Time Within CMC Timelines The Registrar will, as a matter of general practice, grant extensions of time where they fall within the CMC timelines. Extensions of Time Beyond CMC Timelines 1. Slow-Track Cases Under the slow-track timelines, as the evidence of the party initiating the action can be filed as late as 14 months from the Counter-Statement, parties effectively have a total of 14 months to reach a settlement. This saves parties unnecessary expense in preparing evidence for the adversarial process while they negotiate. As 14 months would provide parties a reasonable opportunity to reach a settlement in most cases, in exercising the discretionary power under Rule 32(9), the Registrar will most likely refuse to grant any further extension of time beyond that timeline unless it is shown to the Registrar’s satisfaction that there are good and sufficient reasons to do so as required under Rule 32(9).
Page 1 and 2:
51 Bras Basah Road #04-01, Plaza By
Page 3 and 4:
Trade Marks Journal No. 040/2010 In
Page 5 and 6:
Trade Marks Journal No. 040/2010 Pa
Page 7 and 8:
Page 9 and 10:
Page 11 and 12:
Page 13 and 14:
Page 15 and 16:
Page 17 and 18:
Page 19 and 20:
Page 21 and 22: Trade Marks Journal No. 040/2010 Pa
Page 71: Trade Marks Journal No. 040/2010 Pa
Page 123 and 124:
Page 125 and 126:
Page 127 and 128:
Page 129 and 130:
Page 131 and 132:
Page 133 and 134:
Page 135 and 136:
Page 137 and 138:
Page 139 and 140:
Page 141 and 142:
Page 143 and 144:
Page 145 and 146:
Page 147 and 148:
Page 149 and 150:
Page 151 and 152:
Page 153 and 154:
Page 155 and 156:
Page 157 and 158:
Page 159 and 160:
Page 161 and 162:
Page 163 and 164:
Page 165 and 166:
Page 167 and 168:
Page 169 and 170:
Page 171 and 172:
Page 173 and 174:
Page 175 and 176:
Page 177 and 178:
Page 179 and 180:
Page 181 and 182:
Page 183 and 184:
Page 185 and 186:
Page 187 and 188:
Page 189 and 190:
Page 191 and 192:
Page 193 and 194:
Page 195 and 196:
Page 197 and 198:
Page 199 and 200:
Page 201 and 202:
Page 203 and 204:
Page 205 and 206:
Page 207 and 208:
Page 209 and 210:
Page 211 and 212:
Page 213 and 214:
Page 215 and 216:
Page 217 and 218:
Page 219 and 220:
Page 221 and 222:
Page 223 and 224:
Page 225 and 226:
Page 227 and 228:
Page 229 and 230:
Page 231 and 232:
Page 233 and 234:
Page 235 and 236:
Page 237 and 238:
Page 239 and 240:
Page 241 and 242:
Page 243 and 244:
Page 245 and 246:
Page 247 and 248:
Page 249 and 250:
Page 251 and 252:
Page 253 and 254:
Page 255 and 256:
Page 257 and 258:
Page 259 and 260:
Page 261 and 262:
Page 263 and 264:
Page 265 and 266:
Page 267 and 268:
Page 269 and 270:
Page 271 and 272:
Page 273 and 274:
Page 275 and 276:
Page 277 and 278:
Page 279 and 280:
Page 281 and 282:
Page 283 and 284:
Page 285 and 286:
Page 287 and 288:
Page 289 and 290:
Page 291 and 292:
Page 293 and 294:
Page 295 and 296:
Page 297:
show all

Readmore - Intellect Worldwide Sdn Bhd

You also want an ePaper? Increase the reach of your titles

Delete template?

Save as template?