Deferment of a trade mark

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 within the time period before the application lapses. There is no fee applicable 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 extension to be processed. Please note that fees apply for extensions of time.

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. Different fees apply 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 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 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.

 

Last updated: 
17 March 2016