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3. Trade marks that were registered under the Trade Marks 1953 prior to the commencement of the Trade Marks Act 2002
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3.1 Registered status
Trade marks that were registered under the Trade Marks Act 1953, and that were valid immediately before the commencement of the Trade Marks Act 2002, are deemed to be registered under the Trade Marks Act 2002 11 and retain their original dates of registration.12
Footnotes
11 See section 208(3)(a) of the Trade Marks Act 2002.
12 See section 208(3)(b) of the Trade Marks Act 2002.
3.2 Validity of the orginal registration
Where a trade mark was valid immediately before the commencement of the Trade Marks Act 2002, the original registration of that trade mark can only be invalidated if the trade mark is declared to be invalid under section 73 of the Trade Marks Act 2002.13
Footnotes
13 See section 208(3)(a) of the Trade Marks Act 2002.
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:
| Renewal application received when? | Renewal application processed under | Renewed for |
| Before the Trade Marks Act 2002 commenced | Trade Marks Act 1953 | 14 Years |
| After the Trade Marks Act 2002 commenced | Trade Marks Act 2002 | 10 Years |
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.
3.4 Applications for alteration, assignment, expunction or cancellation
An application for the alteration, assignment, expunction or cancellation of a registered trade mark 20 that was received before the commencement of the Trade Marks Act 2002 will be processed in accordance with the Trade Marks Act 1953.21
An application for the alteration, expunction or cancellation of a registered trade mark that is received after the commencement of the Trade Marks Act 2002 will be processed in accordance with the Trade Marks Act 2002.
An application for the assignment of a registered trade mark that is received after the commencement of the Trade Marks Act 2002 will be processed in accordance with the Trade Marks Act 2002, even if the assignment document itself is dated before the new Act comes into force.
Footnotes
20 Other than applications for the alteration, assignment, expunction or cancellation of a registered defensive trade mark; see section 203(2) of the Trade Marks Act 2002.
3.5 Revocation on the grounds of non-use
3.5.1 Non-use from the actual date of registration
A trade mark (other than a defensive trade mark) with an actual date of registration22 under the Trade Marks Act 1953 that is within the five years prior to the commencement of the Trade Marks Act 2002 cannot be revoked under section 66(1)(a) of the Trade Marks Act 2002 until five years and one month23 have elapsed since its actual date of registration.
Section 66(1)(a) of the Trade Marks Act 2002 applies to all trade mark applications that have an actual date of registration after the commencement of the Trade Marks Act 2002 – whether registered under the provisions of the Trade Marks Act 1953 or the Trade Marks Act 2002.
Footnotes
22 Practice Guideline Amendment 2004/05, Information For Clients, Issue 33: 30 September 2004.
23 Under section 66(1)(a), an application for revocation on grounds of non-use may only be made one month after the relevant period of non-use has passed.
3.6 Removal
25Under the Trade Marks Act 1953, a trade mark registration was not removed from the register for non-payment of the renewal fee until:
- the Commissioner had sent notice to the registered proprietor of the date of expiration of the trade mark and the conditions as to payment of fees and otherwise upon which renewal of registration may be obtained; and
- the time prescribed in the notice has expired and the conditions had not been duly complied with.26
The notice under section 29(3) must have been sent not less than 3 months prior to the expiration of the registration. Regulation 54 of the Trade Marks Regulations 1954 provided that the Commissioner must advertise the non- payment of a renewal fee in the Patent Office Journal and, if payment of the fee were received in the period of one month after advertisement, the registration would be renewed.
The Trade Marks Regulations 1954 were revoked by regulation 165 of the Trade Marks Regulations 2003. Regulation 165 provides that despite the revocation of the Trade Marks Regulations 1954 they remain in force and apply in respect of the matters to which the Trade Marks Act 1953 remains in force under section 203 of the Trade Marks Act 2002.
Footnotes
25 Practice Guideline Amendment 2003/3, Information For Clients, Issue 28: 30 September 2003
26 See section 29 of the Trade Marks Act 1953.
3.6.1 Removal where the mark expired prior to the commencement of the Trade Marks Act 2002 but was not advertised before commencement
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.
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).
3.7 Restoration
Regulation 55 of the Trade Marks Regulations 1954 provides that a mark that has been removed from the register, may be restored to the register “upon payment of the renewal fee and receipt of an application [for renewal], together with a restoration fee and an application [for restoration]” if the Commissioner is satisfied that it is just to do so, and subject to any conditions the Commissioner thinks fit.
Regulation 134 of the Trade Marks Regulations 2003 provides that where a trade mark has expired and the mark has been removed to the register, the mark may be restored to the register. However, the owner of the removed trade mark must apply for restoration of the trade mark within 12 months of the date on which the trade mark was removed from the register.
As stated previously, section 203 of the Trade Marks Act 2002 sets out the purposes for which the Trade Marks Act 1953 continues in effect despite its repeal. Generally section 203 of the Trade Marks Act 2002 preserves existing rights under the Trade Marks Act 1953, i.e. the rights of a trade mark owner or applicant, or the initiator of proceedings in relation to a trade mark application or registration.
There are no transitional provisions in the Trade Marks Act 2002 or Trade Marks Regulations 2003 that relate to restoration of trade marks to the register. The intention appears to have been that any application for restoration of a trade mark to the register after the commencement of the Trade Marks Act 2002 will be subject to the provisions of the Trade Marks Act 2002 and Trade Marks Regulations 2003, irrespective of whether the mark was removed under the Trade Marks Act 1953 or Trade Marks Act 2002s.
Accordingly any application for restoration of a trade mark registration that lapsed before the commencement Trade Marks Act 2002 must be made according to regulation 134 of the Trade Marks Regulations 2003 within one year of its removal from the register. Once the trade mark is restored to the register it will be deemed to be registered under the Trade Marks Act 2002.
