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5.2 Registered Defensive Trade Marks
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5.2.1 Registered status
Defensive 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 200234 and retain their original dates of registration.35
Given that no provision is made in the Trade Marks Act 2002 for defensive trade marks, then upon the commencement of the Trade Marks Act 2002, registered defensive trade marks are deemed to be registered as ordinary trade marks.
Footnotes
34 See section 208(3)(a) of the Trade Marks Act 2002.
35 See section 208(3)(b) of the Trade Marks Act 2002.
5.2.2 Renewal
Defensive 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, retain their existing registration periods of either 7 or 14 years, as applicable.36
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 2002,37 regardless of when the renewal application is received.38
The comments made earlier in these Guidelines39 regarding sections 59(2)(c) and 59(3) of the Trade Marks Act 2002 apply equally to the first renewal of a defensive trade mark under the Trade Marks Act 2002.
Footnotes
36 See section 208(3)(c) of the Trade Marks Act 2002.
37 See section 208(3)(c) of the Trade Marks Act 2002.
38 The Trade Marks Act 2002 applies even in instances where the renewal application was received before the commencement of the Trade Marks Act 2002, as section 203(1)(b) of the Trade Marks Act 2002 does not apply to applications in respect of defensive trade marks by virtue of section 203(2) of the same Act.
5.2.3 Applications for alteration, assignment, expunction or cancellation
Applications for the alteration, assignment, expunction or cancellation of registered defensive trade marks will be processed in accordance with the Trade Marks Act 2002 regardless of when those applications are received.40
Footnotes
40 The Trade Marks Act 2002 applies even in instances where the applications for alteration, assignment, expunction or cancellation were received before the commencement of the Trade Marks Act 2002, as section 203(1)(b) of the Trade Marks Act 2002 does not apply to applications in respect of defensive trade marks by virtue of section 203(2) of the same Act.
5.2.4 Proceedings in relation to registered defensive trade marks
Any proceedings that commenced prior to the commencement of the Trade Marks Act 2002 in relation to registered defensive trade marks will be processed in accordance with the Trade Marks Act 1953.41
Proceedings that commence after the commencement of the Trade Marks Act 2002 in relation to registered defensive trade marks will be processed in accordance with the Trade Marks Act 2002.
Footnotes
41 See section 203(1)(c) of the Trade Marks Act 2002. Section 203(2) does not appear to except proceedings in relation to registered defensive trade marks from the ambit of section 203(1)(c), as section 203(1)(c) concerns “proceedings” rather than “applications”.
5.2.5 Revocation on the grounds of non-use
A trade mark that was registered as a defensive trade mark under the Trade Marks Act 1953 cannot be revoked under section 66(1)(a) of the Trade Marks Act 2002 until three years after the commencement of the Trade Marks Act 2002,42 but can be revoked under that section after that three year period has elapsed.
Footnote
42 See section 208(7) of the Trade Marks Act 2002.
