Registration to be prima facie evidence
Open ↗101. In all legal proceedings relating to a registered trade mark or any right thereunder (including proceedings for rectification of the register) —(a)
the register is prima facie evidence of anything contained therein;
(b)
the registration of the prescribed particulars of any registrable transaction under section 39 is prima facie evidence of the transaction; and
(c)
the registration of a person as proprietor of a registered trade mark is prima facie evidence of —(i)
the validity of the original registration; and
(ii)
any subsequent assignment or other transmission of the registration.
Certificate of validity of contested registration
Open ↗102.—(1) If in any proceedings before the Registrar or the Court the validity of the registration of a trade mark to any extent is contested and it is found by the Registrar or the Court that the registration of the trade mark is wholly or partially valid, the Registrar or the Court may give a certificate to that effect and the fact that the validity of the registration was so contested.[23/2019]
(2) Where a certificate is given under subsection (1) and in subsequent proceedings before the Registrar or the Court —(a)
the validity of the registration is again questioned; and
(b)
the proprietor obtains a final order or judgment in the proprietor’s favour relying on the validity of the registration as found in the earlier proceedings,
the proprietor is entitled to the proprietor’s costs as between solicitor and client unless the Registrar or the Court directs otherwise.
[23/2019]
(3) Subsection (2) does not extend to the costs of an appeal in any such proceedings.
Certificate of Registrar
Open ↗103. A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing which the Registrar is authorised to make or do under this Act, is prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or not done.
Costs of proceedings before Court
Open ↗104. In all proceedings before the Court under this Act, the Court may award to any party (including the Registrar) such costs as it may consider reasonable, but the Registrar is not to be ordered to pay the costs of any other of the parties.
Burden of proving use of trade mark
Open ↗105. If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it.
Composition of offences
Open ↗105A.—(1) The Registrar or any person authorised in writing by the Registrar may compound any offence under this Act that is prescribed as a compoundable offence by collecting from a person reasonably suspected of having committed the offence a sum not exceeding the lower of the following:(a)
one half of the amount of the maximum fine that is prescribed for the offence;
(b)
$5,000.[Act 23 of 2019 wef 10/06/2022]
(2) The Office may, with the approval of the Minister, make regulations to prescribe the offences which may be compounded.
(3) On payment of the sum of money, no further proceedings are to be taken against that person in respect of the offence.
(4) All sums collected under this section must be paid into the Consolidated Fund.[Act 23 of 2019 wef 10/06/2022]
Jurisdiction of Courts
Open ↗106. A District Court or a Magistrate’s Court has jurisdiction to hear and determine all offences under this Act and, despite anything to the contrary in the Criminal Procedure Code 2010, has power to impose the full penalty or punishment in respect of any such offence.
Offence committed by partnership or body corporate
Open ↗107.—(1) Proceedings for an offence under this Act alleged to have been committed by a partnership must be brought against the partnership in the name of the firm and not in that of the partners; but without affecting any liability of the partners under subsection (3).
(2) A fine imposed on a partnership on its conviction in such proceedings must be paid out of the partnership assets.
(3) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.
(4) Where an offence under this Act committed by a body corporate is proved to have been committed with the consent or connivance of a director, manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he or she as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.
Power to make rules
Open ↗108.—(1) The Minister may make rules —(a)
for any purpose for which rules are authorised or required to be made under this Act;
(b)
for prescribing matters authorised or required by this Act to be prescribed;
(c)
for prescribing matters necessary or convenient to be prescribed for carrying out or giving effect to this Act;
(d)
for prescribing matters necessary or convenient to be prescribed for the conduct of any proceedings or other matter before the Registrar. [3/2007]
(2) Without limiting subsection (1), the rules may make provision —(a)
as to the practice and procedure of any proceedings or other matter before the Registrar;
(b)
as to the manner of filing of applications or other documents;
(c)
requiring persons to make such statutory declarations as may be prescribed in support of any application, notice or request;
(d)
requiring and regulating the translation of documents and the filing and authentication of any translation;
(e)
as to the service of documents;
(ea)
to enable the Registrar to publish —(i)
an application to rectify an error or omission in the register; and
(ii)
a request to amend an application, a notice or other document,
and to provide for the making of objections to the rectification or amendment by a person claiming to be affected by it;
[Act 7 of 2022 wef 26/05/2022]
(f)
authorising the rectification of irregularities of procedure;
(g)
prescribing time limits for anything required to be done in connection with any proceedings under this Act;
(h)
for the extension of any time limit which has been prescribed, or which the Registrar has specified, and which has not expired;
(i)
as to the giving of evidence in proceedings before the Registrar under this Act by affidavit or statutory declaration; [Act 7 of 2022 wef 26/05/2022]
(ia)
for the continued processing of an application that is treated as withdrawn; and[Act 7 of 2022 wef 26/05/2022]
(j)
for the reinstatement of —(i)
[Deleted by Act 7 of 2022 wef 26/05/2022]
(ii)
any right which has been abrogated, or thing which has ceased to be in force or to exist, by reason of a failure to comply with any time limit which has been prescribed or which the Registrar has specified,
and the conditions for such reinstatement.
[42/2005; 3/2007]
Transitional provisions
Open ↗109.—(1) The provisions of the Third Schedule have effect with respect to transitional matters on 15 January 1999.(2) [Deleted by Act 31 of 2022 wef 01/11/2022]
—(1) The provisions of the Third Schedule have effect with respect to transitional matters on 15 January 1999.
(2) [Deleted by Act 31 of 2022 wef 01/11/2022]
Source: Singapore Statutes Online (Attorney-General's Chambers), © Government of Singapore.
