A trade mark application can lapse if you fail to respond to an adverse examination report or pay the appropriate extension fees to respond to the report on time. In either of these cases, IP Australia will not register your application and enter it on the Trade Mark Register. Alternatively, your trade mark registration may expire if you miss the renewal deadline and do not pay the renewal fees in time. Although, owners of a registered trade mark are provided an additional six months grace period to file an ‘expired renewal’. However, if you also miss this, your trade mark registration will expire and no longer be valid. This article explains how you can revive a lapsed or expired trade mark application.
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Responding to an Adverse Examination Report
To avoid your trade mark application lapsing, you should respond to any adverse examination report that IP Australia issues on time. IP Australia can issue you an adverse examination report if your application does not meet the legislative requirements for trade mark registration. The report will typically outline:
- the reasons why your examiner is not prepared to accept your application; and
- options you could take to overcome the issues preventing acceptance.
The evidence you should provide in your response to an adverse examination report will depend on the reasons your examiner listed in your adverse examination report. For example, you might have to provide marketing materials or packaging to show that you have used your trade mark for a certain period. In this instance, you should seek legal advice to ensure your evidence adequately responds to the issues your examiner raised in your report.
Paying Your Fees for a Time Extension
If you do not respond to an adverse examination report within 15 months of receiving it, you may be able to apply for a time extension. However, IP Australia will not automatically accept requests for time extensions if your request for an extension is over six months. Instead, IP Australia will only accept your request if you miss the response period as a result of:
- you or your agent’s error or omission;
- circumstances beyond your control; or
- special circumstances.
Although, you must pay the fees associated with your request for a time extension. Failure to do so can result in your trade mark application lapsing. The fees are typically $100 for each month with the extension. Although, there is an exception where there are exceptional circumstances. IP Australia provides a more comprehensive list of their fees.
If your application meets specific requirements, then you may also be able to apply for a deferment. This means your application is ‘paused’ while you wait for a separate issue to resolve, such as the outcome of another application or an opposition proceeding.
Continue reading this article below the formRenew Your Trade Mark Application
Suppose you registered your trade mark but failed to renew it before its expiry date. IP Australia allows you to renew your trade mark within six months from expiry.
In this instance, you will need to pay the standard ten-year renewal fee and an additional late charge per month that you are late.
Once you pay the relevant fees, IP Australia will renew your trade mark registration for an additional ten years. However, if you also fail to meet the expired six month deadline, your registration will no longer be valid and expire.
Reapply For Registration
If you fail to renew your registration by the expiry date or within the six month grace period, IP Australia will remove your trade mark from the Register. As a result, the only way you can ‘revive’ your expired registration is by reapplying for the trade mark from the very beginning. Indeed, this includes all the associated waiting times and fees.
You should note that when you reapply for trade mark registration, there is no guarantee that IP Australia will approve your trade mark application the second time. That is to say, having previously been the trade mark owner of a trade mark does not necessarily give you any priority when applying for it a second time. After all, you risk another business owner applying for a trade mark similar to yours when your trade mark was not registered. In any event, you should seek legal advice when replying for a trade mark.
Ultimately, it is best to ensure you avoid an expired trade mark application. This way, you can renew your registration without the costs and risks associated with reapplying for trade mark registration.
Key Takeaways
To avoid a lapsed or expired trade mark application, you should:
- respond to an adverse examination report within 15 months of receiving it; or
- pay the appropriate fees if you apply for a time extension to respond to the report.
If you miss the grace period, you must reapply for trade mark registration.
If you have questions about reviving a lapsed trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
While you can use a lapsed trade mark to promote your business, you should know that it will not be registered. Therefore, you cannot commence legal action under trade mark law if someone uses a similar or identical sign concerning similar goods and services during this period.
In Australia, trade mark registration lasts ten years from its filing date. After this time, you will need to renew your trade mark or your registration can expire.
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