Missing a renewal is not always fatal. Sections 62 and 63 of the Trade Marks Act (Chapter 385) provide a 12-month window in which the position can still be retrieved.
First, what removal means
Under section 61(2), if the renewal conditions have not been complied with at the expiration of the prescribed time, the Registrar may remove the trade mark from the Register. From that point:
- the exclusive right under section 49 is gone, because it depends on registration;
- there is no cause of action for infringement under section 53 for use during the gap;
- the Part XI criminal protections, which apply to a registered trade mark, no longer apply; and
- claiming the mark is still registered becomes an offence under section 103.
What survives is whatever exists outside the Register — reputation, and with it an action for passing off, and any copyright in the artwork.
Section 62 — restoration within 12 months
Where a trade mark has been removed under section 61(2), the Registrar may, within 12 months of the date of expiration of the registration, if he is satisfied that it is just to do so, restore the trade mark to the Register and renew its registration — either generally or subject to such conditions or limitations as he sees fit to impose — for a further period of 10 years from the expiration of the last registration.
Three features matter.
- The 12 months runs from the date of expiration, not from the date of removal. Removal may happen some time after expiry; the window does not extend accordingly.
- “If he is satisfied that it is just to do so” is a genuine discretion. Restoration is not automatic on payment of a late fee. Expect to explain the failure — illness, a change of agent, a notice sent to a superseded address, an administrative oversight promptly corrected — and to show that no third party has acted on the strength of the removal.
- The renewed term runs from the expiration of the last registration, so no time is gained by restoring late. Conditions or limitations may be imposed as the price of restoration.
A person aggrieved by the Registrar’s decision under section 62(1) may appeal to the Court (s 62(2)). Section 62(3) disapplies section 95 — the provision on the Registrar’s costs in court proceedings — in relation to subsection (1).
Under section 66(4), where a mark removed under section 61(2) is restored under section 62, the registration of a person as a registered user of that mark may be renewed as of the date of expiration of the last registration — so a licensee’s entry can be brought back into line rather than having to be applied for afresh.
Section 63 — the removed mark still blocks others
Where a mark has been removed under section 61(2), it shall, for the purpose of an application for registration by another person, for a period of 12 months next after the expiration of the last registration, be deemed to be a trade mark which is already registered — unless it is shown to the Registrar’s satisfaction that:
(a) there has been no use in good faith of the mark during the two years immediately preceding the expiration of the last registration; or
(b) no deception or confusion would be likely to arise from the use of the mark that is the subject of the new application, by reason of any previous use of the removed mark.
Section 63 operates only for the purpose of an application by another person. It means a competitor who files during the 12 months faces the removed mark as a citation under section 24.
It does not revive the exclusive right, and it does not allow the former proprietor to sue anyone for use during the gap. For that, the mark must be restored under section 62.
| Exception | What the later applicant must show |
|---|---|
| (a) No recent use | No use in good faith of the removed mark during the two years immediately before the expiry — a mark that was already dormant gets no protection |
| (b) No likely confusion | That no deception or confusion would be likely from use of the new mark, by reason of any previous use of the removed one |
Both exceptions turn on evidence, and the burden is on the person seeking to have the removed mark disregarded. The former proprietor who has a good use record for the two years before expiry is in a strong position — another reason to keep dated evidence of use as a matter of routine.
The 12 months, step by step
| Point | Position |
|---|---|
| Before expiry | Registration in force; renew under s 60 |
| Prescribed time before expiry | Registrar sends the expiry notice to the address on the Register (s 61(1)) |
| Expiry, conditions not met | Registrar may remove (s 61(2)) |
| Expiry to 12 months | Restoration possible if just (s 62); the mark still blocks other applications (s 63); but no infringement rights |
| After 12 months | Restoration is no longer available; a fresh application under s 32, with a new date under s 45 |
If the window has closed
A fresh application is the only route, and it takes a new date of registration under section 45. Points to work through:
- Search first. Someone may have filed during the gap; that mark now has the earlier date under section 24.
- Rely on your prior use. Under section 26(2), where you have continuously used the mark before the other proprietor’s use or registration, whichever is earlier, the Registrar shall not refuse your application by reason of that other registration.
- And on the defensive side, section 55(1)(c) makes such continuous prior use not an infringement of the later registration.
- Consider section 13. If the mark filed during the gap should not have been registered, rectification is available to a person aggrieved.
- Keep trading under the mark throughout — the reputation supports passing off, section 26(2) and section 55(1)(c) alike.
Sources
- Trade Marks Act (Chapter 385) — ss 13, 24, 26, 32, 45, 49, 53, 55, 60–63, 66, 95, 103; Part XI
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.