From the date that you lodge your trademark application, it usually takes about 6-7 months until you can officially register your trademark. Usually, IP Australia examines trademark applications in the order in which they are filed. However, if you need to know the outcome of your application earlier, you can request that the examination of your application be expedited. You will then be able to know whether your application is going to be accepted or not.

An expedited examination can take place in two ways; either the applicant can request that the application be examined earlier, or the Registrar can decide to expedite examination if they believe it is necessary.

How do I request expedited examination?

The Trade Marks Regulations set out what is required for you to make a request to expedite the examination.

The request for expedited examination can only be made by the person who applied for the trademark, or their agent.

They must submit the request in writing together with a declaration that addresses the reasons for the request. Common reasons that are given for requesting expedited examination include situations where the applicant believes their trademark is being infringed or may be infringed, where the applicant is planning to file a trademark application overseas (and so needs the Australian trademark), or where the applicant has spent money on advertising or manufacturing and needs the trademark registered so as to protect their investments.

The Registrar, who examines the request, will grant the request if they believe the reasons for the request are based on reasonable grounds.

If you don’t submit a declaration along with your request for expedited examination, and you have not set out the reasonable grounds for expediting or they are not found to be satisfactory, then you will receive a letter from the Trade Marks and Designs Administration Section. The letter will let you know the requirements that must be met and what needs to take place in order for the deficiencies to be overcome and for expedited examination to occur. It is then your responsibility to respond to this, otherwise the application goes back in the normal queue.

If you do respond and you are able to overcome the deficiencies, your application will be taken to be examined!

What if I don’t request expedited examination?

Even if you don’t request expedited examination, the Registrar may still expedite the examination if they believe that it is warranted to do so.

There are certain applications that may require an expedited examination. For example, applications and International Registrations Designating Australia (extension of international trademarks) that claim priority because of a convention country application will have examination expedited.

For other applications, the Registrar may use discretion and look at each situation on its own merits to determine whether or not it needs an expedited examination.

Having your request for expedited examination granted

You will be notified as soon as practicable about whether your request for expedited examination has been approved or refused.

Just as trademark applications are generally examined in the order in which they are filed, the expedited applications must also be examined in the order in which the requests for expedition are filed. After these are examined, the trademark applications which are not expedited are examined.

Conclusion

There are certain situations where it is a good idea to have your application examined earlier, but it is important to identify these before trying to request an expedited examination. A trademarking lawyer can advise you as to whether it is necessary to make a request and whether your grounds for making a request are reasonable.

Dhanu Eliezer

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