Welcome to Part 2 on Deferment of Acceptance. We will look at the Termination of Deferment of Acceptance, as well as the Strategic Application of a Deferment of Acceptance.

Termination of Deferment of Acceptance

Based on the grounds that the deferment of acceptance was granted, there will be a difference in the length of time and circumstances that will lead to the termination of the deferment of acceptance. The following outlines the grounds for deferment and the circumstances that will lead to the termination of the deferment:

  • Where a deferment is granted, which is based on a citation against the application, it will be terminated when the proceedings in relation to the cited application are finalised. In other words, the deferment will be terminated when the cited application is withdrawn, rejected, refused, lapses or is registered;
  • Where a deferment is granted based on the applicant seeking to overcome the cited trade mark by providing evidence of “honest and concurrent use”, “prior use”, or “other circumstance”, the deferment will terminate either when the citation has been withdrawn or at the end of a period of six months, whichever comes first;
  • Where a deferment has been granted on the basis that the applicant has filed an application for the removal of the cited trade mark for non-use, the deferment will be terminated upon the finalisation of the non-use proceedings;
  • Where a deferment has been granted on the basis that the applicant is seeking to have the cited trade mark removed by way of a court order, the termination will end once these proceedings have ended; or
  • Where the deferment has been granted because the cited trade mark is still within the six month grace period, the deferment will be terminated once the cited trade mark is either renewed or removed from the registry.

Strategic Application of a Deferment of Acceptance

A deferment, as noted, is available when a trade mark application has been refused due to a conflict with a trade mark that is the same or similar with respect to the same goods or services, or similar goods or closely related services.

The use of filing a request for a deferment of acceptance can be a strategic move applied by the application of the trade mark application refused.   Some reasons for this are:

  1. The trade mark application keeps its original filing date . This means your application has a priority date over subsequent applications. This means that the trade mark application would be cited against subsequent applications because it has filing date priority.
  2. When an application is originally refused, the applicant is given 15 months to overcome the issues – if the trade mark application is granted a deferment, the application will stop where it stands until the ground upon which the deferment was granted is terminated. At this point, the applicant will still have the time period remaining from the initial 15 months to have the trade mark application accepted.
  3. A deferment based on “other circumstances” will provide the applicant with a further six months to request from the owners of the cited trade mark a “letter of consent” to overcome the citation.
  4. Once a deferment has been granted, the applicant can amend the grounds upon which the deferment is sought – this allows for the applicant to explore all options that are available. 

Conclusion

Preparing an application for deferment of acceptance is complex in nature and easily misunderstood. It is always best to seek the assistance of an appropriately qualified professional when deciding whether this is the most appropriate strategy for you. LegalVision can assist applicants with filing an application for deferment of acceptance, and help in understanding what the best course of action is. Of course, in many cases, it is best to speak to someone before submitting the application to minimise the chance that the deferment of acceptance will not be granted!

Adi Snir
If you would like further information on any of the topics mentioned in this article, please get in touch using the form on this page.
  • We will be in touch shortly with a quote. By submitting this form, you agree to receive emails from LegalVision and can unsubscribe at any time. See our full Privacy Policy.
  • This field is for validation purposes and should be left unchanged.
Would you like to get in touch with Adi about this topic, or ask us any other question? Please fill out the form below to send Adi a message!
  • We will be in touch shortly with a quote. By submitting this form, you agree to receive emails from LegalVision and can unsubscribe at any time. See our full Privacy Policy.
  • This field is for validation purposes and should be left unchanged.

Privacy Policy Snapshot

We collect and store information about you. Let us explain why we do this.

What information do you collect?

We collect a range of data about you, including your contact details, legal issues and data on how you use our website.

How do you collect information?

We collect information over the phone, by email and through our website.

What do you do with this information?

We store and use your information to deliver you better legal services. This mostly involves communicating with you, marketing to you and occasionally sharing your information with our partners.

How do I contact you?

You can always see what data you’ve stored with us.

Questions, comments or complaints? Reach out on 1300 544 755 or email us at info@legalvision.com.au

View Privacy Policy