3 Tips For Requesting a Trade Mark Deferment

Emily Young

• 15 June 2021
• 24 June 2021
• 5 min read

Trade mark registration is an important part of establishing your business’ brand, so you must do it right. If your trade mark receives an adverse examination report, it means that your trade mark has not met IP Australia’s trade mark requirements. You will have 15 months to respond to the findings in this report. If there is a reason preventing you from responding to this report, you may be eligible to request a trade mark deferment. This article will take you through: 

• what a trade mark deferment is; 
• why you might need one; and 
• three tips for requesting a trade mark deferment. 

What is a Trade Mark Deferment?

A trade mark deferment puts a pause on your trade mark application for a granted period of time. You can request it at any time during the examination process once you have received an adverse examination report. If the adverse examination report raises any conflicting trade marks against your application, you can request a deferment to have more time to respond. 

Why Request a Trade Mark Deferment?

Requesting a trade mark deferment is sometimes necessary because the issues raised in an adverse examination report can take a long time to resolve. An adverse examination report gives you 15 months from the time it is issued to respond to the issues raised. The examiner must also respond in this period. If you defer your application, it will pause this 15-month period to give you more time to respond.

You will need to apply for a ‘Request for Deferment of Acceptance’ to receive a deferment. It is up to the Registrar to decide if they will grant you the deferment. They will decide based on the reasons you have provided in the deferment request and can give you a deferment of six months if needed. Alternatively, you may receive a deferment if a specific event occurs. 

For example, you may receive a deferment if the conflicting application has been withdrawn or if the grounds for rejection no longer exist. The Registrar can also grant you more than one deferment if you provide sufficient reasons. During your deferment period, you can still respond to any of the issues raised in your report.

1. Know if You Are Eligible

To be eligible for trade mark deferment, one or more of the following circumstances must apply:

• you are seeking removal for non-use of the conflicting trade mark;
• you plan on showing concurrent prior use of the trade mark;
• the conflicting trade mark is a pending application;
• you had consent to use the trade mark;
• the conflicting trade mark has the status ‘expired – renewal possible’; or
• the conflicting trade mark has pending court action.

If your request for a deferment falls outside of these reasons, IP Australia will not grant you a deferment.

2. Consider Requesting an Extension of Time

If you request a trade mark deferment close to the end of your 15-month adverse examination report period, you may need to request an extension of time. This is because the examiner also needs time to consider your application within this 15-month period, and there may be little time for this once your deferment lapses. You should request an extension of time before IP Australia can process your deferment request.

3. Provide Different Reasons

You can request a deferment numerous times, providing that the reason you give is different on each occasion. You will also be able to provide additional reasons why you require a deferment during the deferment period.

It is important to note that if you are granted a deferment for more than one reason and one of those reasons changes, such as a conflicting trade mark application being withdrawn, the deferment will automatically be amended.

Key Takeaways

Granting your trade mark deferment is ultimately up to the Registrar, but that does not mean that you cannot put your best foot forward when requesting a deferment. This includes:

• knowing the eligibility requirements;
• considering the need to request an extension of time; and
• providing as many relevant reasons as needed for a deferment.

If you need help with a trade mark deferment or trade mark legal assistance more generally, our experienced trade mark lawyers can help. Contact them on 1300 657 423 or by filling out the form on this page. 

Frequently Asked Questions