3.3 Renewal

Trade marks that were registered under the Trade Marks Act 1953, and that were valid immediately before the Trade Marks Act 2002 came into force, retain their existing registration periods of either 7 or 14 years, as applicable.¹⁴

In instances where the renewal application was received before the commencement of the Trade Marks Act 2002, the Trade Marks Act 1953 applies in respect of the renewal application,¹⁵ with the result that the registration will be renewed for a period of 14 years from the date of expiration of the original registration or of the last renewal of registration, as applicable.¹⁶

In all other instances, upon the expiry of the existing registration period the registration will be renewable for periods of 10 years at a time in accordance with section 58 of the Trade Marks Act 2002.¹⁷

Section 59(2) of the Trade Marks Act 2002 requires the Commissioner to provide notice of the upcoming expiration of a trade mark registration. Section 59(3) stipulates when the Commissioner must remove a trade mark from the register in the event that renewal does not take place. Sections 59(2)(c) and 59(3) both refer to “the expiration of the period of 10 years”. However, in instances where the trade mark concerned was registered before the Trade Marks Act 2002 came into force, and where that trade mark is being renewed for the first time pursuant to the Trade Marks Act 2002, in order to give effect to section 208(3)(c) of the Trade Marks Act 2002 the references to a period of “10 years” in sections 59(2)(c) and 59(3) should be read as “7 years”¹⁸ or “14 years”¹⁹ , as applicable.

Summary:

Footnotes

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

¹⁵ See section 203(1)(b) of the Trade Marks Act 2002. This does not apply to renewal applications in respect of defensive trade mark registrations.

¹⁶ See section 29(2) of the Trade Marks Act 1953.

¹⁷ See section 208(3)(c) of the Trade Marks Act 2002.

¹⁸ In the case of registrations that have not previously been renewed.

¹⁹ In the case of registrations that have previously been renewed.