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Trade Marks Act 2002

Administrative provisions and miscellaneous - Miscellaneous - Transitional and savings provisions

208: Status of trade marks registered before commencement of Act

You could also call this:

"Old trade marks are still valid under the new law"

If you had a trade mark registered before this new law started, it's still valid unless someone proves it's not valid under section 73. Trade marks registered under the old law are now considered registered under the new law. They keep their original registration date and how long they were registered for (7 or 14 years). When that time is up, section 58 of the new law applies.

If your trade mark was registered in the last 5 years before this new law started, it can't be cancelled for non-use until 5 years after you registered it. For trade marks registered under the old law, if you haven't used it for 5 years (not 3), and this non-use started in the 5 years before the new law, it might be cancelled.

After these time periods, your trade mark can be cancelled if you're not using it. If you have a special kind of trade mark called a defensive trade mark, it can't be cancelled for non-use until 3 years after this new law started.

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View the original legislation for this page at https://legislation.govt.nz/act/public/1986/0120/latest/link.aspx?id=DLM165265.

Topics:
Business > Intellectual propertyMāori affairs > Te reo Māori
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Part 5Administrative provisions and miscellaneous
Miscellaneous: Transitional and savings provisions

208Status of trade marks registered before commencement of Act

  1. Except as provided in subsection (2), nothing in this Act invalidates the original registration of a trade mark that, immediately before the commencement of this Act, was valid.

  2. However, subsection (1) does not apply to the extent that a registered trade mark referred to in that subsection is declared to be invalid under section 73.

  3. A trade mark that was registered under the Trade Marks Act 1953, including a defensive trade mark, and that, immediately before the commencement of this Act, was valid—

  4. is deemed to be registered under this Act as a trade mark, whether registered in Part A or Part B of the register; and
    1. retains its original date of registration; and
      1. retains its existing registration period, under the Trade Marks Act 1953, of 7 or 14 years, as the case may be, but, at the expiration of that registration period, section 58 applies.

        1. A trade mark that was registered under the Trade Marks Act 1953, other than a defensive trade mark, within the period of 5 years before the coming into force of this Act, cannot be revoked under section 66(1)(a) until 5 years after its actual date of registration.

        2. For the purposes of section 66(1)(b), the uninterrupted period of suspension of use is 5 years (not 3) if all the following apply:

        3. the trade mark was registered under the Trade Marks Act 1953; and
          1. the trade mark is not a defensive trade mark; and
            1. the uninterrupted period of suspension of use began within the period of 5 years before this Act came into force.

              1. A trade mark that was registered under the Trade Marks Act 1953, other than a defensive trade mark, may be revoked under section 66(1)(a) or (b) after the periods specified in subsections (4) and (5) have elapsed.

              2. 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) or (b) until 3 years after the coming into force of this Act.

              Notes
              • Section 208(2): amended, on , by section 3 of the Trade Marks Amendment Act 2003 (2003 No 100).
              • Section 208(5): replaced, on , by section 18 of the Trade Marks Amendment Act 2005 (2005 No 116).