Deferment of a trade mark
Deferment of acceptance happens when a trade mark cannot be accepted for registration.
What are the grounds on which deferment may be requested?
- The cited trade mark application(s) are not yet registered or revocation of them is pending.
- The cited trade mark application(s) are undergoing removal for non-use.
- The applicant is seeking to establish honest, concurrent or prior use, or other circumstances (such as obtaining a letter of consent).
- The cited trade mark application(s) have a status of Expired - Renewal Possible.
- The cited trade mark application(s) have court action pending.
You will need to complete a Request for Deferment of Acceptance form to defer your trade mark.
Why defer?
You can request deferment pending the outcome of one or more cited trade marks. For example, if a trade mark cited in the examiner's report has expired, but renewal is still possible, you can defer the acceptance of your application, pending the outcome of the cited trade mark.
Deferment of acceptance can also be requested more than once on the same application but different reasons must be provided.
Deferment is subject to the Registrar's discretion.
Time frame
Deferment is available for 15 months after the issue of the first report. An application for deferment must be made within the time period before the lapsing of an application. There is no fee applicable for deferment within 15 months.
If deferment is requested close to 15 months from the first report date, it may be necessary to lodge an extension of time during the deferment period so that the extension can be processed upon termination of deferment to avoid lapsing (fees are applicable).
Deferment is also possible after the 15 months, but an extension of time under section 224 of the Trade Marks Act 1995 must be made to seek deferment. There are fees applicable for deferment outside 15 months.
The extension period is from the 15-month point to the day we receive the deferment request along with all fees payable and a declaration. If the extension period is more than three months, it must be advertised in the Australian Official Journal of Trade Marks for opposition purposes.
Note
An extension of time to seek deferment is separate to any extensions of the acceptance date that have already been paid. It is also in addition to any extensions of time for acceptance that may be required to ensure the application is pending at the time it is deferred.
Deferment Period
The deferment period will vary depending on the reason.
If deferment is granted due to a pending citation or a cited mark being expired-renewal possible, the deferment will terminate when the status of that trade mark changes.
If deferment is granted due to seeking to establish honest concurrent use or other circumstances the application will be deferred to 6 months.
Termination
When deferment terminates, the new acceptance date will automatically be calculated. After termination of deferment, the amount of time that is left for acceptance will be the amount of time that was left at the date the request for deferment of acceptance was filed.
Last Updated: 13/12/2012
