Welcome to Part 1 on Deferment of Acceptance. Here we will define what it actually means, where it sits in the process of trademarking and what the grounds are for deferring an acceptance.
What is a Deferment of Acceptance?
A deferment of acceptance is an option available to a trade mark applicant who has been refused registration during the formal examination process by IP Australia because the application conflicts with a registered trade mark or a trade mark application with an earlier filing date.
The conflict arises because the trade mark cited against the application is either substantially identical or deceptively similar with respect to the same goods or services, or similar goods or closely-related services.
If a trade mark application is refused during the formal examination process, the applicant will have 15 months to overcome the objection(s) raised. The effect of the deferment of acceptance on the application, if granted, will be that the trade mark application is set in abeyance – deferred – until terminated.
Termination of the deferment occurs when the ground or grounds for deferment have either been met, overcome or the time limit provided has expired.
There is the requirement that the deferment of acceptance must be requested in writing. In order for the deferment to be granted, the reason outlined within the application must reflect a grounds for deferment of acceptance.
Grounds for Deferment of Acceptance
Deferment of a trade mark application will be available, in specific circumstances, either on the request of the applicant or the initiative of the Registrar of Trade Marks. These circumstances include one or more of the following:
- Where a trade mark has been cited against the application on the basis that the trade mark has an earlier filing date and the application is awaiting finalisation of registration for the cited trade mark; or
- Where a trade mark has been cited against the application, and the applicant is seeking to establish “honest and concurrent use”, “prior use” or “other circumstances”, to overcome the citation raised by the trade mark; or
- Where a trade mark has been cited against the application, and the applicant has filed an application for non-use to have the trade mark cited removed from the registry; or
- Where a trade mark has been cited against the application, and the applicant has sought an order from a court, within 12 months of a trade mark being registered, to be removed from the registry; or
- Where a trade mark has been cited against the application, and the cited trade mark has not been renewed and is within the six-month grace period that the trade mark will expire and be removed from the registry.
Period of Deferment
The period of time that the deferment of acceptance can be granted will depend on the grounds upon which the deferment has been granted. Generally speaking, the deferment ends when the application has been withdrawn, or when there are no longer any grounds for rejecting the application based of the cited trade mark and the citation is withdrawn, or if the preceding do not apply, when the period of time specified expires.
Stay tuned for part 2 where we will discuss in depth the termination of Deferment of Acceptance, as well as the Strategic Application of a Deferment of Acceptance. If you require more information on the various grounds for deferment of acceptance, or are simple looking to trade mark your business name or logo, get in touch with our intellectual property specialists today on 1300 544 755.
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