7.7 Removed marks

²⁵Where a cited mark has been removed from the register because its owner failed to renew its registration in time, under section 60(1) of the Act the citation is valid ²⁶ for the period of one year from the date of expiry of the registration of the cited mark, but not beyond that date.²⁷

However, section 60(2) of the Act reads as follows:

Subsection (1) does not apply if the Commissioner is satisfied either that –

1. there has been no genuine use of the trade mark that has been removed during the 2 years immediately before its removal; or
2. no deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application by reason of any previous use of the trade mark that has been removed.

Therefore, an applicant may overcome a citation of a mark that has been removed from the register where the applicant can show that there has been no genuine use of the trade mark in the previous two years prior to its removal or no deception or confusion is likely to arise from use of the mark.

The onus is on the applicant to prove this to the satisfaction of the Commissioner. The Commissioner will exercise this discretion cautiously as the owner of the recently removed mark will not necessarily be aware of the proceedings.

Where a removed trade mark has been raised as a citation against an application, the applicant has the following options:

• Where the deadline set for response to the Office’s Compliance Report is after the deadline for renewal of the cited mark, await the expiration of the renewal deadline of the cited mark and advise IPONZ if the cited mark is then abandoned. Note that it is It is the responsibility of the applicant to advise IPONZ once more than a year has passed since the date of expiry of the registration of the cited mark; or
• Where the deadline set for response to the Office’s Compliance Report is before the deadline for renewal of the cited mark, apply for an extension of time until one month after the cited mark’s renewal deadline. Note that unless an additional extension of time is requested in writing and granted, the application will be treated as abandoned, pursuant to section 44(1) of the Act, if IPONZ does not receive a response to the Compliance Report on or prior to the expiry of the new time limit; or
• Demonstrate, to the satisfaction of the Commissioner, that either:
  • There has been no genuine use of the cited mark during the two years immediately before it was removed from the register²⁸ ; or
  • No deception or confusion would be likely to arise from the use of the trade mark that is the subject of the application by reason of any previous use of the trade mark that has been removed.²⁹

    The Commissioner will exercise this discretion cautiously and will contact     the owner of the cited mark before any decision is made.

Footnotes

²⁵ Paragraph 7.7 of this Guideline was updated by clarifying the Commissioner’s approach to the exclusions in section 60(2).

²⁶ Provided that the status of the cited mark does not change, and provided that neither of the circumstances set out in section 60(2) of the Act apply.

²⁷ See section 60(1) of the Act and the discussion above under ‘Section 60: raising removed trade marks as citations’.

²⁸ See section 60(2)(a)

²⁹ See section 60(2)(b) of the Act