One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Trade mark acceptance
Deferment of acceptance of a trade mark
Trade mark acceptance is 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 of a trade mark application with a previously registered trade mark or an existing trade mark application whose filing date predates that of the trade mark in question. Deferment of acceptance of a trade mark is terminated when the grounds for deferment have been addressed or the allotted deferment period has elapsed.
Deferment can be requested if one or more grounds are present:
- the trade marks in conflict are still in the application phase;
- the registrations of the conflicting trade marks are, at the time of the request, undergoing non-use removal proceedings;
- the trade mark 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 can be requested any time within 15 months from the first adverse report date in order to address the aforementioned issues, which can take a considerable amount of time. Extension of the deferment period is possible under section 224 of the Trade Marks Act when the deferment request is submitted close to the end of the allotted 15 months. Deferment may be granted at the Registrar’s own discretion.
The deferment period ends depending on the circumstances in which the deferment was requested. For expired trade marks that can be renewed, deferment ends when the status changes. For deferment to be granted so that honest concurrent use and other circumstances can be established, deferment can last for six months. Deferment of a trade mark application can be requested multiple times so long as the reason for the deferment is different each time.
The new acceptance date will be calculated based on the end date of the deferment.