23 Transitional provisions

Applications for the registration of a trade mark¹ that were filed before the commencement of the Trade Marks Act 2002 must meet the requirements of the Trade Marks Act 1953.²

Footnotes

Where an application for the registration of a trade mark³ was filed before the commencement of the Trade Marks Act 2002, any proceedings related to that application will be processed under the Trade Marks Act 1953 until the trade mark concerned is registered,⁴ including:

• Proceedings that commenced before the Trade Marks Act 2002 came into force; and
• Proceedings that commenced, or that commence, after the Trade Marks Act 2002 came into force.

There is one exception to the above. Where an application for the registration of a trade mark was filed before the commencement of the Trade Marks Act 2002, any application for assignment or transmission of that application will be processed under the Trade Marks Act 2002⁵ and the assignment or transmission may therefore take place prior to registration.

Once the trade mark concerned is registered, the Trade Marks Act 2002 applies in respect of any proceedings related to the registration.

Footnotes

³ Other than an application for the registration of a defensive trade mark; see section 203(2) of the Trade Marks Act 2002.
⁴ Section 203(1)(a) states that the Trade Marks Act 1953 applies in respect of an application received before the commencement of the Trade Marks Act 2002, and “any proceedings related to that application”, but only “until the trade mark is registered”.
⁵ See sections 203(3) and 12(1) of the Trade Marks Act 2002

Section 203(1)(a) states that the Trade Marks Act 1953 continues in force and applies in respect of applications for the registration of a trade mark⁶ that were received before the commencement of the Trade Marks Act 2002 “until the trade mark is registered”. Section 35(3) of the Interpretation Act 1999 states that “a period of time described … as continuing … until a specified day, act, or event includes that day or the day of the act or event”. Where an application to register a trade mark that was received before the commencement of the Trade Marks Act 2002 reaches the point of registration, its registration will therefore occur under the Trade Marks Act 1953.

Section 29(1) of the Trade Marks Act 1953 states that the registration of a trade mark under that Act “shall be for a period of 7 years”. It follows that all trade mark applications that were received before the commencement of the Trade Marks Act 2002, but that are registered after the commencement of the Trade Marks Act 2002, have an initial registration period of 7 years as they are registered under the Trade Marks Act 1953.⁷

^Footnotes

⁶ Other than applications for the registration of defensive trade marks; see section 203(2) of the Trade Marks Act 2002.

⁷ Section 57(2) of the Trade Marks Act 2002 stipulates that section 57(1) of that Act does not apply to a trade mark “first registered under the Trade Marks Act 1953”.

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.

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.

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.

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.

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.

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.

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.

Under the Trade Marks Act 1953, well known trade marks could be registered in respect of goods or services in which the owner of the trade mark did not trade or intend to trade, where use of the trade mark in relation to those goods or services by other traders would be likely to be taken as indicating a connection in the course of trade with the owner of the well known trade mark.³⁰

Under the Trade Marks Act 2002 it is not possible to apply to register a defensive trade mark, as no provision is made for such applications.

The transitional provisions expressly state that the Trade Marks Act 1953 does not continue to apply to applications for the registration of defensive trade marks that were received before the commencement of the Trade Marks Act 2002.³¹ The transitional provisions also state that the Commissioner must refund any fee paid in respect of an application for the registration of a defensive trade mark that was filed before the commencement of the Trade Marks Act 2002 and that was not yet registered at the commencement of the Trade Marks Act 2002.³²

These provisions clearly indicate that applications for the registration of defensive trade marks that were filed prior to the commencement of the Trade Marks Act 2002 may not proceed to registration after the commencement of the Trade Marks Act 2002.

On commencement of the Trade Marks Act 2002:

• The Commissioner will refund all fees paid in respect of applications to register defensive trade marks that are not yet registered.
• Applications to register defensive trade marks will be processed under the Trade Marks Act 2002. They will be rejected under section 43 of that Act, on the grounds that they have not been made in accordance with the Trade Marks Act 2002,³³ which does not provide for defensive trade mark registrations.

The combined effect of sections 203(1)(a) and 203(2) of the Trade Marks Act 2002 is that the Trade Marks Act 1953 does not apply to applications in respect of defensive trade marks, or “any proceedings related to” such applications, until the trade mark is registered. It follows from this that any proceedings that commenced prior to the commencement of the Trade Marks Act 2002 in relation to applications to register defensive trade marks will be processed in accordance with the Trade Marks Act 2002.

Footnotes

³⁰ See section 36 of the Trade Marks Act 1953.
³¹ See sections 203(2) and 203(1)(a) of the Trade Marks Act 2002.
³² See section 205 of the Trade Marks Act 2002.

^{33 See section 13(2)(a) of the Trade Marks Act 2002, which states that in order to be registrable under the Trade Marks Act 2002, the application must be made in accordance with that Act.}