2.2 Proceedings related to such applications

Where an application for the registration of a trade mark³ was filed before the commencement of the Trade Marks Act 2002, any proceedings related to that application will be processed under the Trade Marks Act 1953 until the trade mark concerned is registered,⁴ including:

• Proceedings that commenced before the Trade Marks Act 2002 came into force; and
• Proceedings that commenced, or that commence, after the Trade Marks Act 2002 came into force.

There is one exception to the above. Where an application for the registration of a trade mark was filed before the commencement of the Trade Marks Act 2002, any application for assignment or transmission of that application will be processed under the Trade Marks Act 2002⁵ and the assignment or transmission may therefore take place prior to registration.

Once the trade mark concerned is registered, the Trade Marks Act 2002 applies in respect of any proceedings related to the registration.

Footnotes

³ Other than an application for the registration of a defensive trade mark; see section 203(2) of the Trade Marks Act 2002.
⁴ Section 203(1)(a) states that the Trade Marks Act 1953 applies in respect of an application received before the commencement of the Trade Marks Act 2002, and “any proceedings related to that application”, but only “until the trade mark is registered”.
⁵ See sections 203(3) and 12(1) of the Trade Marks Act 2002