3.6 Removal

There are no transitional provisions in the Trade Marks Act 2002 or Trade Marks Regulations 2003 stating whether advertisement of a registration that expired under the Trade Marks Act 1953 should occur after the commencement of the Trade Marks Act 2002.

However, section 18 of the Interpretation Act 1999 provides the general rules relating to the effect of the repeal of legislation on existing rights under that legislation. Generally, “the repeal of an enactment (including regulations) does not affect the completion of a matter or thing or the bringing or completion of proceedings that relate to an existing right, interest, title, immunity, or duty” ²⁷. Regulation 54 of the Trade Marks Regulations 1954 confers on trade mark proprietors a right to continued registration of their trade marks until one month after advertisement of the expiry of their trade marks.

In the absence of any transitional provisions to the contrary, the Trade Marks Act 1953 and Trade Marks Regulations 1954 will continue to have effect for the purpose of completing any matter or thing that relates to an existing right, interest title or duty, as if they had not been repealed²⁸ . Accordingly trade marks that expired prior to the commencement of the Trade Marks Act 1953 will still be advertised according to regulation 54 of the Trade Marks Regulations 1954, and will not be removed if the renewal fee has not been paid until one month after such advertisement.

Footnotes

²⁷ See section 18(1) of the Interpretation Act 1999.

²⁸ See section 18(2) of the Interpretation Act 1999.

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).