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2. Applications to register a trade mark that were received prior to the commencement of the Trade Marks Act 2002
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2.1 Registrability requirements
Applications for the registration of a trade mark1 that were filed before the commencement of the Trade Marks Act 2002 must meet the requirements of the Trade Marks Act 1953.2
Footnotes
1 Other than applications for the registration of a defensive trade mark; see section 203(2) of the Trade Marks Act 2002.2 See section 203(1)(a) of the Trade Marks Act 2002
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
2.3 Registration
Section 203(1)(a) states that the Trade Marks Act 1953 continues in force and applies in respect of applications for the registration of a trade mark6 that were received before the commencement of the Trade Marks Act 2002 “until the trade mark is registered”. Section 35(3) of the Interpretation Act 1999 states that “a period of time described … as continuing … until a specified day, act, or event includes that day or the day of the act or event”. Where an application to register a trade mark that was received before the commencement of the Trade Marks Act 2002 reaches the point of registration, its registration will therefore occur under the Trade Marks Act 1953.
Section 29(1) of the Trade Marks Act 1953 states that the registration of a trade mark under that Act “shall be for a period of 7 years”. It follows that all trade mark applications that were received before the commencement of the Trade Marks Act 2002, but that are registered after the commencement of the Trade Marks Act 2002, have an initial registration period of 7 years as they are registered under the Trade Marks Act 1953.7
Footnotes
6 Other than applications for the registration of defensive trade marks; see section 203(2) of the Trade Marks Act 2002.
7 Section 57(2) of the Trade Marks Act 2002 stipulates that section 57(1) of that Act does not apply to a trade mark “first registered under the Trade Marks Act 1953”.
2.3.1 Registered status
Trade marks registered under the Trade Marks Act 1953, whose deemed dates of registration predate the Trade Marks Act 2002, are considered to be trade marks that were valid immediately before the commencement of the Trade Marks Act 2002. It follows that section 208(3) of the Trade Marks Act 2002 applies to all trade marks that are registered under the Trade Marks Act 1953 after the commencement of the Trade Marks Act 2002. Following their registration such trade marks are deemed to be registered under the Trade Marks Act 20028 and retain their original dates of registration.9
Footnotes
8 See section 208(3)(a) of the Trade Marks Act 2002.
9 See section 208(3)(b) of the Trade Marks Act 2002.
2.3.2 Validity of the orginal registration
Trade marks registered under the Trade Marks Act 1953, whose deemed dates of registration predate the Trade Marks Act 2002, are considered to be trade marks that were valid immediately before the commencement of the Trade Marks Act 2002. It follows that sections 208(1) and 208(2) apply to all trade marks that are registered under the Trade Marks Act 1953 after the commencement of the Trade Marks Act 2002. The original registrations of such trade marks can only be invalidated if the trade marks are declared to be invalid under section 73 of the Trade Marks Act 2002.10
Footnote
10 See sections 208(1) and 208(2) of the Trade Marks Act 2002. The reference to “section 74” in section 208(2) was corrected to “section 73”; see the Statutes Amendment Bill (No 3) 2002.
2.3.3 Renewal
At the end of the initial registration period, the registration will be renewable for periods of 10 years in accordance with section 58 of the Trade Marks Act 2002.
