8. Removed trade marks

⁵²Section 60(1) of the Act reads as follows:

A trade mark that has been removed from the register for non-payment of the renewal fee must be taken into account for a period of 1 year after the date of expiry of the registered trade mark when determining the registrability of a later application.

Therefore, expired registrations must be taken into account, for the purposes of determining the registrability of later applications, for a period of one year from the date of their expiry.

The purpose behind section 60(1) of the Act is to allow for the possible restoration to the register of expired registrations. Since an expired trade mark may be restored to the register within the period of 12 months from the date of expiry of its registration, it is necessary for expired trade marks to be considered as potential citations within that 12-month period.

A trade mark that has been removed from the register, because its owner failed to renew its registration by the specified time, is potentially citable under sections 25(1)(a) or 25(1)(b) of the Act during the period of one year from the date of expiry of its registration.⁵³

Accordingly, when determining the registrability of an application under sections 25(1)(a) and 25(1)(b) of the Act, trade marks whose registrations have expired must be taken into account, as if they are still on the register, for the period of one year from the date of their expiry.

Footnotes

⁵² Paragraph 8 of this Guideline was updated on October 2007 by deletion of sub-paragraph 8.1 (included in sub-paragraph 7.7 of Guideline on Methods of Overcoming a Citation)

⁵³ Trade marks that have expired for non-payment of the renewal fee but may be restored to the register within the period of 12 months of the expiry date are status 105 in the IPONZ database.