Last updated: 
26 November 2020

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

Deferment can be requested when conflicting trade marks have been raised against your application, and one or more of the following circumstances apply:

  • The conflicting trade marks are pending applications.
  • You (the applicant) are seeking removal for non-use on the conflicting trade mark registration(s).
  • 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 registration/s have a status of ‘expired - renewal possible’.
  • The conflicting trade mark application/s or registration/s have court action pending.

You will need to complete a Request for Deferment of Acceptance form to defer your trade mark application.

Why defer?

The above issues can take significant time to be resolved, which may often be more than the 15 months you are allowed after initial examination of your application.

While your application is deferred, you can still respond to us about any of the problems raised in your report.

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 can be requested at any time during the examination process once a first report has been issued. An application for deferment must be made before the application lapses. There is no fee for requesting a deferment. 

If you request deferment close to the acceptance due date, it may be necessary to lodge an extension of time when filing the deferment request. This will allow time to respond to the examination report once the deferment has terminated.

If a trade mark application has lapsed prior to acceptance, an extension of time for acceptance will need to be filed. This extension will need to be approved before a deferment request can be processed.

Please note that fees apply for extensions of time.

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 for six months.

Termination

When deferment ends the new acceptance date will automatically be calculated. At the end of the deferment period, a notice of termination of deferment will be issued. This notice will indicate the new acceptance due date. This is calculated from the amount of time left at the date the deferment request was filed.