3. Renewal of a trade mark

Section 59(2) of the Trade Marks Act 2002 requires the Commissioner to provide notice of the upcoming expiration of a trade mark registration.⁶

A Reminder of Renewal of Registration is sent to the owner’s address for service⁷ four months prior to the expiry of the trade mark⁸ stating the following information:

• The trade mark registration number;
• The date on which the registration will expire, if it is not renewed;⁹
• The last day on which the trade mark can be renewed;¹⁰
• The amount of the renewal fee, and how and where the renewal fee may be paid; ¹¹ and
• A statement indicating that if the renewal fee is not paid by the due date the trade mark will be removed from the register.

The Reminder of Renewal of Registration also includes information on how to restore the trade mark if the trade mark registration is not renewed by the expiry of the registration period.¹²

Footnotes

⁶ Regulation 132 of the Trade Marks Regulations 2003 provides that the notice under section 59(2) must be sent not later than 2 months before the expiration of the trade mark registration.
⁷ See regulation 132(2)(a) of the Trade Marks Regulations 2003.
⁸ See regulation 132(2)(b) of the Trade Marks Regulations 2003.
⁹ See section 59(2)(a) of the Trade Marks Act 2002 and regulation 132(3)(a) of the Trade Marks Regulations 2003.
¹⁰ See section 59(2)(b) of the Trade Marks Act 2002 and regulation 132(3)(b) of the Trade Marks Regulations 2003.
¹¹ See regulation 132(3)(c) of the Trade Marks Regulations 2003.
¹² See Restoration, below

An application for renewal of a trade mark must be made before the date of expiry, but no earlier than one year before that date.¹³

Any person may apply for the renewal but the application for the renewal of a trade mark registration must contain the following information:¹⁴

• The trade mark registration number;
• A representation or description of the trade mark;
• The owner’s name and address for service;
• Where the owner has an agent, the agent’s name;
• The name and communication address of the person paying the renewal fee; and
• If the trade mark is registered in more than one class, details of the class or classes for which registration is to be renewed.

While a filing receipt for the renewal fees paid will be issued, renewal certificates are not issued under the Trade Marks Act 2002.

Footnotes

¹³ See section 208(3)(a) of the Trade Marks Act 2002.

¹⁴ See section 208(3)(b) of the Trade Marks Act 2002.