3.6.2 Removal of a mark that has expired after the commencement of the Trade Marks Act 2002, but for which no notice under section 59(2) of the Trade Marks Act 2002 has issued

Section 59(3) of the Trade Marks Act 2002 provides that the Commissioner must remove a trade mark from the register if the mark has expired and:

• a notice under section 59(2)(a) has issued advising the owner of the date of expiry of the trade mark; and
• the conditions as to payment of the renewal fee specified in that notice have not been complied with.

The owner of a trade mark for which the term of registration expired less than 3 months after 20 August 2003 will have received a renewal reminder under section 29(3) of the Trade Marks Act 1953. The information required in a notice to a trade mark owner under section 59(2)(a) of the Trade Marks Act 2002 is very similar to that required under section 29(3) of the 1953 Act. A notice issued under section 29(3) of the 1953 Act must state:

• the date of expiration of the trade mark; and
• the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained.

A notice issued under section 59(2)(a) of the Trade Marks Act 2002 must state the date on which the registration of the trade mark to which the notice relates will expire.

A notice under section 29(3) of the Trade Marks Act 1953 serves the same purpose as a notice under section 59(2)(a) of the Trade Marks Act 2002. Therefore, where a notice under section 29(3) of the Trade Marks Act 1953 has issued and the prescribed renewal fee has not been paid prior to the date specified in the notice, the criteria in section 59(3)(a) and (b) of the Trade Marks Act 2002 have been met and the Commissioner must remove the trade mark from the register under section 59(3).