Requesting Deferment of Trade Mark Examination

A trade mark deferment allows applicants to pause the examination process after receiving an adverse examination report. This option provides additional time to address the issues raised by the examiner, particularly when conflicting trade marks are involved. Applicants can request a deferment at any stage of the examination process after receiving an adverse report, subject to approval by the Registrar of Trade Marks.

Why Request a Trade Mark Deferment?

Receiving an adverse examination report means that the trade mark application has encountered objections that must be resolved before registration can proceed. Typically, applicants have 15 months from the date of the report to respond. However, in cases where resolving these objections is complex, such as when dealing with conflicting trade marks, removal applications, or negotiations, a deferment can provide additional time to prepare a response without the risk of the application lapsing.

Applicants must submit a formal Request for Deferment of Acceptance, which is assessed by the Registrar. If granted, the deferment period may last up to six months, or longer if contingent on specific conditions, such as the withdrawal of a conflicting application or the resolution of legal disputes. Multiple deferments may be granted if sufficient justification is provided.

Eligibility Criteria for Trade Mark Deferment

A deferment request is only considered if at least one of the following conditions applies-

• The applicant is seeking the removal of a conflicting trade mark for non-use.
• The applicant intends to establish honest concurrent or prior use of the trade mark.
• The conflicting trade mark is a pending application that has not yet been finalized.
• The applicant has obtained consent from the owner of the conflicting trade mark.
• The conflicting trade mark has an “expired, renewal possible” status.
• There is ongoing court action related to the conflicting trade mark.

If a request for deferment does not meet one of these criteria, IP Australia will not approve the request.

Considering an Extension of Time

When requesting a deferment near the end of the 15-month response period, applicants should also consider applying for a time extension. Since the examiner must review and respond to the applicant’s submissions within the same timeframe, a deferment near the deadline may leave insufficient time for consideration. To avoid complications, an extension request should be submitted before the deferment request is processed.

Requesting Multiple Deferments

Applicants can request multiple deferments, provided that each request is based on a different reason. If an initial deferment was granted due to a pending trade mark application, a subsequent request might be justified by concurrent use or an ongoing court case. Additionally, applicants may submit additional reasons for deferment during an ongoing deferment period.

However, if a deferment was granted based on multiple reasons and one of those reasons changes, such as the withdrawal of a conflicting application, the deferment period may be modified accordingly.

Key Considerations When Requesting a Deferment

While the decision to grant a trade mark deferment rests with the Registrar, applicants can strengthen their request by ensuring-

• They meet the eligibility requirements outlined by IP Australia.
• They assess the need for a time extension to prevent delays in examination.
• They provide detailed and valid justifications for their deferment request, including alternative grounds for multiple requests.

If you require guidance on trade mark deferments or any other trade mark-related legal matters, our experienced trade mark professionals can assist.