Last updated: 
18 October 2018

When problems with a trade mark application have been identified in an adverse report and certain circumstances exist it can sometimes be deferred.

Reasons for requesting a deferment

  • The conflicting trade mark application/s raised against your own application are pending.
  • The conflicting trade mark application/s are undergoing removal for non-use.
  • You (the applicant) are seeking to establish honest concurrent or prior use, or other circumstances (such as obtaining a letter of consent).
  • The conflicting trade mark application/s have a status of ‘expired - renewal possible’.
  • The conflicting 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 conflicting trade marks. For example, if a trade mark raised as an issue in the examiner's report has expired, but renewal is still possible, you can defer the acceptance of your application, pending the outcome of that 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 before the application lapses. There is no fee for deferment within 15 months. 

If you request deferment close to 15 months from the first report date, it may be necessary to lodge an extension of time during the deferment period. This will enable the deferment to be processed. Please note that fees apply for extensions of time.

Note: If you have been granted an extension of time for acceptance, then you may submit a request for deferment during that extended period without the need to lodge an additional request for extension of time for deferment.

Deferment period

The deferment period will vary depending on the reason.

If deferment is granted due to a pending conflicting trade mark or a conflicting trade mark with ‘expired - renewal possible’ status the deferment will end when the status of that trade mark changes.

If deferment is granted because you are seeking to establish honest concurrent use or other circumstances the application will be deferred to six months.

Termination

When deferment ends the new acceptance date will automatically be calculated. At the end of the deferment period the amount of time left for acceptance will be the amount of time left at the date the request was filed.