Acceptance of a trade mark application
What happens once a mark is accepted?
If an adverse Examination Report is not issued in relation to an application, or if the Applicant has successfully overcome any issues raised during examination, the mark will be accepted for registration.
Once the mark is accepted, it will be advertised in the Australian Official Journal of Trade Marks for a two-month period which allows any third party to oppose registration. If the application is not opposed during this period, or if an extension of time to file an opposition has not been requested, the mark will be registered.
Deferment of acceptance of a trade mark
Trade mark acceptance may be deferred when a written request is submitted by the applicant in order to address an objection raised in an adverse examination report issued by IP Australia during formal examination. An objection may arise due to a conflict with a previously registered or applied for trade mark under section 44 or reg 4.15A.
Deferment can be requested on the following basis:
- the trade mark(s) in conflict are still pending;
- the conflicting registration(s) has been challenged and is undergoing non-use removal or cancellation proceedings;
- the cited trade mark(s) has a registration status of “expired – renewal possible”
- the conflicting trade marks have pending court action
- the applicant aims to establish prior use or honest, concurrent use or obtain a letter of consent from the owner of the conflicting trade mark
A Request for Deferment of Acceptance may be requested at any time within 15 months from the first adverse report date. If the request is entered close to the acceptance deadline, it may also be necessary that the Applicant enter an extension of time for the deferment request to be considered before the application lapses. Deferment may be granted at the Registrar’s own discretion.
The end of the deferment period will depend on the circumstances in which the deferment was requested. Possible scenarios on when the deferment will end include:
- The conflicting application/registration has been withdrawn
- The Registrar is satisfied the ground for rejection no longer exists
- Proceedings described above have ended and the conflicting mark(s) has been removed or renewed.
For deferment granted on the basis of prior use, honest concurrent use and other circumstances, deferment will end after a period of six months. The new acceptance date will be calculated based on the end date of the deferment.