Trademark Deferment of Acceptance

Author: Ian Aldridge, Progressive Legal

Are you facing delays or legal roadblocks with your trade mark application? At Progressive Legal, we specialise in helping small to medium business owners protect their intellectual property with smart, strategic solutions.

One highly effective option is a trademark deferment of acceptance, a legal tool that gives you extra time to resolve conflicts, gather supporting evidence, or seek consent. This can dramatically increase your chances of securing a successful trade mark registration.

On this page, we’ll explain how deferring trade mark acceptance works, when to use it, and how our expert team can guide you through every step.

What Are the Reasons to Request a Trademark Deferment of Acceptance?

Pending Conflicting Trademark Application

If there’s a conflicting trade mark application raised against your own, it’s crucial to act strategically rather than rush. By deferring the acceptance of your trade mark, you allow time for the resolution of the pending application. This ensures a fairer assessment of your trade mark and protects your brand’s potential for approval.

Non-Use Removal Request

You have the option to file a non-use removal request at IP Australia for the conflicting trademark. Deferring your trademark acceptance allows you time to gather the necessary evidence and present a compelling case.

Establishing Honest Concurrent or Prior Use

Demonstrating honest concurrent or prior use of your trade mark is often essential, particularly if your brand has been operating under the mark before the conflicting one. A deferment of acceptance provides you with the breathing space to collect and prepare the supporting documentation required to prove the legitimacy and uniqueness of your mark.

Obtaining a Letter of Consent

When seeking a letter of consent from the owner of the conflicting trade mark, deferring acceptance is a practical move. It provides you with the necessary time to secure this important document. A properly drafted letter of consent can significantly increase the likelihood of your trade mark being accepted by IP Australia.

Grace Period for Expired Trade Marks

If a conflicting trade mark has an ‘expired – renewal possible’ status, there is a six-month grace period during which the owner may renew it. By deferring your trade mark acceptance, you can monitor whether the conflicting mark is renewed. If not, it will be removed from the register, clearing the path for your application to proceed.

Court Actions Pending

When court proceedings are in place regarding the conflicting trade mark, deferring acceptance becomes a wise strategic decision. It ensures that your application won’t be negatively affected by ongoing legal outcomes, allowing IP Australia to assess your application once the legal situation is resolved.

In each of these situations, a trademark deferment of acceptance offers a valuable way to maintain control of your trade mark application and improve your chances of successful registration. At Progressive Legal, our team can guide you through the deferment process and help you take the right next steps for your business.

The Deferment Process

To request a trademark deferment of acceptance, you must submit a formal request before your trade mark application lapses. This request must be made within 15 months from the date of your first adverse examination report issued by IP Australia.

The good news? There’s no government fee to request a deferment within this 15-month window. However, if you’re nearing the deadline, you may need to apply for an extension of time and pay the applicable fees to keep your trade mark application active and in good standing.

For more information relating to adverse reports click here.

Why Defer Your Trade Mark Application?

Requesting a trademark deferment of acceptance can offer strategic advantages when your application faces complications. By deferring acceptance, you give your business more control over the outcome and safeguard your intellectual property. Here’s how:

1. Maintain Flexibility
   A deferment allows you to adapt your legal strategy based on how conflicting trade mark matters unfold. This flexibility can be crucial when timing is everything.
2. Maximise Protection
   By deferring acceptance, you give yourself more time to overcome potential objections, secure consent, or resolve legal conflicts, dramatically improving your chances of successful registration.
3. Save Time and Resources
   Handling trade mark complications without legal guidance can be costly and risky. Our experienced team at Progressive Legal provides tailored legal advice and support to help you navigate adverse reports with confidence and efficiency.

The Key Takeaway

When it comes to protecting your business’s intellectual property, requesting a trademark deferment of acceptance can be a smart, strategic move, especially when facing trade mark objections or delays.

By understanding the reasons to defer, the process involved, and the legal options available, you can overcome challenges with greater confidence and increase your chances of securing a successful trade mark registration.

Don’t hesitate to get in touch with us to discuss your trade mark application and receive expert guidance from our experienced team of trade mark lawyers. Simply make an enquiry below or call us on 1800 820 083. 

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