A trade mark is the only intellectual property right that can last forever — provided it is renewed and used. Sections 60 and 61 of the Trade Marks Act (Chapter 385) set out how.
Sections 46 and 60 — 10 years at a time
(1) The registration of a trade mark shall be for a period of 10 years.
(2) The registration may be renewed from time to time in accordance with this Act.
Subject to this Act, the Registrar shall, on application in the prescribed manner by the registered proprietor, renew the registration for a further period of 10 years from the expiration of the last registration.
Three things follow. The duty is expressed as “shall renew” on a proper application. The renewal runs from the expiration of the last registration, not from the date of the renewal application, so an early application does not shorten the new term. And the application must be made by the registered proprietor — which is a reason to keep an assignment registered under section 74 and any change of name recorded under section 11(1)(b).
Under section 45, the date of registration is the date the application was lodged. So the first 10-year term is measured from lodgement, not from the day the entry was actually made — which may be a year or more later. Diary the renewal from the correct date.
Section 61(1) — the Registrar’s notice
At the prescribed time before the expiration of the registration, the Registrar shall send notice to the registered proprietor of the date on which the registration will expire and the conditions as to payment of fees and otherwise on which renewal may be obtained.
Under section 96(1) the address of the registered proprietor as appearing for the time being in the Register is deemed to be the proprietor’s address for all purposes under the Act, and section 96(2) obliges the proprietor to notify the Registrar in writing of any change. Section 97 requires an address for service in Papua New Guinea, likewise to be kept current.
A notice sent to an out-of-date address is still properly sent. The consequences of missing it fall on the proprietor, not on the Registrar. Keep your own diary — do not depend on the reminder.
Section 93 — fees, and when the act is done
(a) Where a fee is payable for an act by the Registrar — the Registrar shall not do that act until the fee has been paid.
(b) Where a fee is payable for an act by another person — the act shall be deemed not to have been done until the fee has been paid.
(c) Where a fee is payable for lodging a document — the document shall be deemed not to have been lodged until the fee has been paid.
A renewal application lodged without the fee is not lodged. On a deadline, that is the difference between renewal and removal.
Section 61(2) — removal for failure to renew
If, at the expiration of the prescribed time, the conditions referred to in subsection (1) have not been complied with, the Registrar may remove the trade mark from the Register.
The word is “may”, not “shall”, and there are two further safety nets:
- Section 62 — the Registrar may, within 12 months of the date of expiration, if satisfied that it is just to do so, restore the mark and renew it for a further 10 years, generally or subject to conditions or limitations.
- Section 63 — for 12 months after expiry, a removed mark is deemed still registered for the purposes of another person’s application, unless it is shown there was no use in good faith in the two years before expiry, or that no deception or confusion would be likely.
Together those give a practical grace period. But they are discretionary, and section 63 protects against a third party’s registration, not against a third party’s use: an unrenewed mark gives no right to sue for infringement in the meantime.
Renewal and registered users
| Provision | Effect |
|---|---|
| s 64(6) | A registered user registration is for such period as the Registrar thinks fit, but not beyond the expiry of the current registration of the mark |
| s 65 | The registered user’s registration expires when the mark’s registration expires, or earlier if so determined |
| s 66(2) | The Registrar sends the expiry notice to both the registered user and the registered proprietor |
| s 66(3) | On compliance, the Registrar may renew — again not beyond the current registration of the mark |
| s 66(4) | Where a mark removed under s 61(2) is restored under s 62, the registered user’s registration may be renewed as of the date of expiration of the last registration |
| s 68 | The Registrar shall cancel a registered user entry for goods for which the mark is no longer registered |
So renewal of the mark and renewal of the licence are linked, and both fall due together. Renew the mark first.
A renewal checklist
- Diary 10 years from the lodgement date, with a reminder at least six months out.
- Confirm the proprietor on the Register is current — name changes under section 11(1)(b), assignments under section 74.
- Confirm the address and address for service under sections 96 and 97.
- Lodge in the prescribed manner, with the fee. Section 93(2)(c) means an unpaid lodgement is no lodgement.
- Review the specification before renewing. Goods you no longer sell are exposed to partial removal under section 14; section 11(1)(d) allows the specification to be narrowed.
- Renew the registered user entries under section 66.
- Take a fresh certified extract under section 9 for your enforcement file.
- Check the use record. Renewal keeps the registration on foot; only use keeps it safe from section 14.
Sources
- Trade Marks Act (Chapter 385) — ss 9, 11, 14, 45, 46, 60–63, 64–68, 74, 93, 96, 97
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.