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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 In other words, the deferment will be terminated when the cited application is withdrawn, rejected, refused, lapses or is registered;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concurrent use”, “prior use”, or “other circumstance”, the deferment will terminate either when the citation has been withdrawn or at the end of a period of six months, whichever comes first;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!

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