Trade Mark Expedited Examination

Author: Zeinab Farhat, Progressive Legal

If you are applying to register a trade mark, you can try to expedite your application by requesting expedited examination with IP Australia. By applying for expedited examination, you can jump the queue as it relates to trade mark applications.

This is particularly useful as it can take up to 7 months to register a trade mark from the date of lodgement of the application. Therefore, expedited examination serves as a useful to for an applicant to receive the outcome of their examination through quicker means.

This article will consider what is expedited examination, for what reasons can expedited examination be made, what happens if a request for expedited examination is granted and key takeaways.

What is expedited examination?

Expedited examination refers to the process in which an applicant can apply for expedited examination of a trade mark. There are two ways in which an expedited examination can occur:  either by a request from the applicant, or, the Registrar.  

The Trade Marks Regulations 1995 (Cth) (“the Regulations”) provide the following key regulations in relation to expedited examination of a trade mark: 

Under regulation 4.18, a person who has applied for registration of a trade mark can request, in writing, for expedited examination of the application. Such request must include a declaration which states the reasons for that request (regulation 4.18(1)(a)(b)).

Under regulation 4.19(2), in the absence of a request for expedited examination of an application for registration of a trade mark, the Registrar can expedite examination of the application if he or she reasonably believes that expedited examination is warranted. Regulation 4.19(2) is distinguishable from regulation 4.18(1) in the sense it provides provision for the Registrar to use his/ her own discretion to expedite examination. 

Regulation 4.21 outlines what needs to be outlined in a declaration.  

A link to the relevant form to complete can be found here.  

For what reasons can I request expedited examination?

The Regulations do not expressly prescribe the circumstances under which a request for expedited examination must fall under.  If you are an applicant seeking expedited examination of a trade mark, some examples of reasons commonly include: 

1. where an applicant has a real fear that their trade mark is being infringed or is likely to be infringed;
2. the applicant has invested resources and money into advertising and requires that their trade mark be registered as soon as possible in order to minimise the risk to the business; or
3. the applicant wishes to file overseas.

What happens if a request for expedited examination is granted?

Once expedited examination has been accepted, the applicant will be notified of acceptance as soon as is practicable. Like trade mark applications (where applications are examined in order of filing), an application for an expedited examination is also examined in that same manner (regulation 4.19(1)(a)).

Trade mark applications which are not expedited are examined after expedited applications (regulation 4.19(1)(b)(i)(ii)), this includes applications for which expedited examination has not been granted. 

Key takeaways

In some circumstances, it may be best to have a trade mark application examined earlier.

If you are considering a request for expedited examination of your application, you should consider obtaining advice from a Trade Mark Lawyer who will be able to provide you with specific advice on whether the request is necessary and/ or whether your grounds for making that request are likely to be considered reasonable by IP Australia.

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