Renewal and restoration

This document provides guidelines on renewal and restoration of a trade mark registered under the Trade Marks Act 2002. These guidelines do not constrain the judgement and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits.

1. Introduction

An owner of a trade mark registration may apply to renew the registration providing the application meets the requirements set out in the Trade Marks Act 2002 (“the Act”) and the Trade Marks Regulations 2003 (“the Regulations”).

Sections 58 and 59 of the Act set out the requirements for the renewal, removal and restoration of a trade mark.

Section 60(1) provides that expired registrations must be taken into account, for the purposes of determining the registrability of later applications, for a period of one year from the date of their expiry.

Regulations 132, 133 and 134 of the Regulations further set out the requirements for the renewal and restoration of a registered mark.

2. The application process

An application for the renewal or restoration of a trade mark registration may be made online. The online renewal facility allows users to restore lapsed trade marks up to 6 months after the expiration date of the registration.

2.1 Confirmation of filing

IPONZ online services provide secure and immediate acknowledgement of your filing. For more information about our online services please see Manage IP.

2.2 Multi-class applications

Renewal or restoration of a trade mark may be applied for in one or more classes in a single application. Where a multi-class renewal or restoration application is filed, the prescribed fee must be included for each class in which renewal or restoration is sought.

2.2.1 Partial renewal of multi-class applications

The case management system will not allow trade mark owners to partially renew or restore a trade mark registration. Trade mark owners wanting to partially renew or restore their trade marks (in one or more classes) have two options:

1. Division

Dividing a registration or a ‘Registered - past expiry date’ trade mark should be used when the owner is uncertain if they wish to renew the registration for all classes. The owner of the trade mark may divide out those classes for which they are unsure they wish to renew or restore their trade mark registration. This will allow the registration to be renewed for some classes, while other classes can proceed to, or remain at ‘Registered - past expiry date’ status.

For more information please see Renew a trade mark. Please note the request to divide a registered mark can take up to 15 working days to be processed.

2. Alteration request

Striking out classes through an alteration request may be used when the owner of the registered mark or ‘Registered - past expiry date’ trade mark is certain they do not wish to renew the registration in all classes. Trade mark owners wanting to partially renew or restore their trade marks will need to alter their trade mark by striking out the class(es) that they do not wish to renew or restore prior to renewing or restoring their trade mark registration. The classes which are struck out will immediately cancel.

For more information please see Renew a trade mark. Trade mark owners will need to request alteration at least 15 working days before they wish to renew their trade marks.

Refunds

A refund may be requested where the trade mark owner renewals the whole trade mark registration but only a partial renewal was desired. The trade mark owner can request a class or classes are deleted and renewal fees for those classes are refunded by sending an email to: mail@iponz.govt.nz

2.3 Prescribed fees

An application for the renewal or restoration of a trade mark registration must be accompanied by the prescribed fee. ²

The prescribed fees for the renewal or restoration of a trade mark are listed on the Trade Mark Fees page on the IPONZ website.

The Commissioner has the discretion to choose the form of payment that will be accepted. ³

Payment of a prescribed fee may be by direct debit, credit card, or internet banking. The online application will be considered to be accompanied by the prescribed fee as at the date the online application is made and the payment details are submitted and accepted.

3. Renewal of a trade mark

A trade mark registration may be renewed at ten year intervals dating from the deemed date of registration. ⁴  There is no limit upon the number of times a registration may be renewed, and may be renewed for further periods of 10 years at a time. ⁵

After renewal, the expiry date continues to be the ten-year anniversary of the original deemed date of registration date, for as long as the trade mark is renewed.

3.1 Reminder of renewal of registration

Section 59(2) of the Trade Marks Act 2002 requires the Commissioner to provide notice of the upcoming expiration of a trade mark registration. ⁶

A Reminder of Renewal of Registration is sent to the owner’s address for service ⁷  four months prior to the expiry of the trade mark ⁸  stating the following information:

• The trade mark registration number;
• The date on which the registration will expire, if it is not renewed; ⁹
• The last day on which the trade mark can be renewed; ¹⁰
• The amount of the renewal fee, and how and where the renewal fee may be paid; ¹¹ and
• A statement indicating that if the renewal fee is not paid by the due date the trade mark will be removed from the register.

The Reminder of Renewal of Registration also includes information on how to restore the trade mark if the trade mark registration is not renewed by the expiry of the registration period. ¹²

3.2 Application for renewal

An application for renewal of a trade mark must be made before the date of expiry, but no earlier than one year before that date. ¹³

Any person may apply for the renewal but the application for the renewal of a trade mark registration must contain the following information: ¹⁴

• The trade mark registration number;
• The owner’s name and address for service;
• Where the owner has an agent, the agent’s name;
• The name and communication address of the person paying the renewal fee; and
• If the trade mark is registered in more than one class, details of the class or classes for which registration is to be renewed. Should the owner not wish to restore in all classes they will need to either divide the registered mark or request an alteration to the registered mark and strike out the classes they do not wish to be restored. This will need to be completed 15 working days prior to the date the trade mark owner wishes to renew.

While a filing receipt for the renewal fees paid will be issued, renewal certificates are not issued under the Trade Marks Act 2002.

4. Removal of a trade mark from the register

Section 59(6) of the Act provides that the Commissioner must remove a trade mark from the register if:

• A notification of the date of expiry has been sent to the owner;
• A period of 6 months has elapsed since the expiry date; and
• The renewal conditions have not been met.

Where the registration of a trade mark is not renewed at the expiry of the registration period, then its status is updated to ‘Registered - past expiry date’ and a Notice of Removal from Register is sent to the owner’s address for service. 

5. Restoration of a trade mark

Once a trade mark has been updated to ‘Registered - past expiry date’ status due to non-payment of the renewal fee, ¹⁶ the owner of the trade mark may apply to restore the mark within 6 months of the expiry of the trade mark registration. ¹⁷

An application to restore a trade mark may be made by the owner by submitting an application for renewal of the trade mark registration and the prescribed renewal fee.

Therefore, an application for the restoration of a trade mark registration must contain the following information: ¹⁸

• The trade mark registration number;
• The owner’s name and address for service;
• Where the owner has an agent, the agent’s name;
• The name and communication address of the person paying the renewal fee; and
• If the trade mark was registered in more than one class, details of the class or classes for which registration is to be renewed. Should the owner not wish to restore in all classes they will need to request either a division of the registered mark or an alteration to the registered mark and strike out the class(es) they do not wish to be restored. This will need to be completed 15 working days prior to the date the trade mark owner wishes to renew.

Where a renewal fee for a lapsed trade mark is paid within 6 months of the date of expiration, the trade mark registration will be restored and a filing receipt issued.

While IPONZ issues a filing receipt for the fee paid, a letter confirming the restoration of the trade mark will not be issued regardless of whether the mark was renewed manually or via the online facility.

Footnotes

• 2 See regulation 133(1)(c) of the Trade Marks Regulations 2003.
• 3 See regulation 170 of the Trade Marks Regulations 2003.
• 4 See section 57 of the Trade Marks Act 2002.
• 5 See section 58 of the Trade Marks Act 2002.
• 6 Regulation 132 of the Trade Marks Regulations 2003 provides that the notice under section 59(2) must be sent not later than 2 months before the expiration of the trade mark registration.
• 7 See regulation 132(2)(a) of the Trade Marks Regulations 2003.
• 8 See regulation 132(2)(b) of the Trade Marks Regulations 2003.
• 9 See section 59(3)(a) of the Trade Marks Act 2002 and regulation 132(3)(a) of the Trade Marks Regulations 2003.
• 10 See section 59(3)(b) of the Trade Marks Act 2002 and regulation 132(3)(b) of the Trade Marks Regulations 2003.
• 11 See regulation 132(3)(c) of the Trade Marks Regulations 2003.
• 12 See Restoration, below
• 13 See section 208(3)(a) of the Trade Marks Act 2002.
• 14 See section 208(3)(b) of the Trade Marks Act 2002.
• 16 Paragraph 5 of this Guideline was updated on 28 March 2007 by deletion of sub-paragraph 5.1 (included in sub-paragraph 8 of Guideline on Relative Grounds: Identical or Similar Trade Marks)
• 17 See regulation 134 of the Trade Marks Regulations 2003.
• 18 See regulation 133 of the Trade Marks Regulations 2003.