When you file a trade mark application, the goal is simple: get that tick of approval from the Registrar and lock in your rights. But if you’ve ever navigated the trade mark examination process, you know that things don’t always go to plan. One of the more strategic tools in our arsenal as IP professionals is the deferment of acceptance.

What Is Deferment of Acceptance?

Deferment of acceptance is a formal process allowed under Section 36 of the Trade Marks Act 1995, which lets the Registrar pause the acceptance of a trade mark application under specific circumstances. Think of it as putting the brakes on the acceptance timeline while you deal with some hurdles, usually citations of earlier trade marks under Section 44. Let’s say you’ve received a report from IP Australia citing a prior trade mark. You’re in the middle of preparing a case for honest concurrent use or maybe even filing non-use proceedings against the cited mark. That’s where deferment steps in, it gives you breathing room to sort things out, without the pressure of the application lapsing.

When Can You Request Deferment?

As a trade mark attorney, I’ve guided many clients through deferment requests usually after a first examination report has landed. You can request deferment any time after the first report, provided the application hasn’t yet lapsed. There’s no government fee, which is always welcome news. Now, here’s a little tip, i.e. if your application is nearing the acceptance due date, you might also need to file an extension of time alongside your deferment request to avoid a lapse. Timing matters.

On which grounds can applicants Request Deferment?

Under regulation 4.13(1)(c), there are a few common (and acceptable) reasons to ask for it:

  1. Pending Cited Application: If a cited mark is still awaiting registration.
  2. Honest Concurrent Use or Prior Use: You’re building evidence to prove your right to coexist under Sections 44(3) or 44(4).
  3. Non-Use Action: You’ve lodged a non-use removal application under Section 92.
  4. Rectification Proceedings: You’ve started court action to rectify the Register.
  5. Un-renewed Cited Trade Mark: The cited mark has expired but still sits within its 6-month grace period.

If your ground doesn’t fall neatly into these categories, you might still have a shot, just be ready to convince the Assistant Director at Trade Marks Administration. One important note- deferment will not be granted if the cited trade mark and your application share the same priority date. That’s a hard stop.

When can the Registrar grant deferment on their own initiative?

Interestingly, the Registrar can also initiate deferment on their own, especially in scenarios like:

  • Appeals or reviews pending in the courts or with the Administrative Review Tribunal,
  • Applicant’s death, where time is needed to settle ownership,
  • Certification trade marks being reviewed by the Australian Competition and Consumer Commission, in fact, in this case, it is mandatory.

So yes, the Registrar’s discretion under regulation 4.13(2) plays a big role.

How Long Does the Deferment Last?

This is the part that usually raises eyebrows. The duration is not fixed; it depends on the reason for deferment-

  • If you’re relying on honest concurrent use, you get 6 months.
  • If you’re waiting on a cited mark’s registration, deferment ends once the status of that application changes (registered, refused, withdrawn, etc.).
  • For non-use or rectification proceedings, deferment ends when those matters are finalized.
  • If the Registrar initiated the deferment due to an appeal, it typically ends 2–3 months after the conclusion of the court process or Administrative Review Tribunal review.

Once the reason behind the deferment no longer exists, the countdown toward acceptance resumes from where you left off.

Important Strategy Points to consider

  1. Plan ahead– Use deferment as part of a broader filing and conflict strategy. It’s not a free pass; it’s a second wind.
  2. Don’t rely on deferment alone– Combine it with appropriate legal actions like non-use or rectification proceedings, to actively resolve the issue.
  3. Track timelines– Once the deferment ends, your acceptance clock resumes. Be prepared.
  4. Stay proactive– You can modify a deferment request if new grounds arise but be prompt.

Final Thoughts

Trade mark deferment isn’t a workaround, it’s a legal mechanism designed to ensure applicants aren’t penalised for procedural delays or legitimate legal conflict resolution. I’ve seen it turn potential refusals into registered trade marks, but only when used strategically.

So, if you’ve hit a roadblock in your trade mark application, don’t panic. You might not need to abandon your brand ambitions just yet. Let’s talk deferment. It might just buy you the time you need to turn things around.

Let’s Talk

At our IP firm, we don’t just file trade marks, we help you make smart decisions every step of the way. If you’re considering withdrawing a trade mark application, or just need clarity on your options, I’m here to help.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.

 

Trademarks