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Trade Marks Journal No. 013/2012
Page No. lxx
(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:
(i)
(iii)
(iii)
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.