An applicant must apply for deferment in writing within a period prescribed in subregulation 4.12(1) or that period as extended under regulation 4.12 or section 224 (subreg 4.13(1)). A valid reason must be provided to defer an application. For example:

a cited trade mark is not yet registered or revocation of registration is pending (this reason is not valid if the cited trade mark has the same filing date)
a cited trade mark is the subject of non-use proceedings
the applicant is seeking to establish honest concurrent use, prior use or other circumstances (such as obtaining a letter of consent)
a cited trade mark has a status of Expired – Renewal Possible
a cited trade mark has court action pending
other reasons may be applicable but these require approval by an Assistant Director in Trade Marks Administration.

4.1 Deferment process where a cited trade mark application is the basis of deferment

4.1.1 If an application for deferment has been made on the ground that a pending application has been cited against the application and that citation has the same filing date as the application for which the request for deferral has been made, that request will be denied.

Part 26 Conflict with other Signs - Section 44 - 7. Trade marks with the same priority/filing date

4.1.2 If 4.1.1 does not apply, the citations are checked to make sure that at least one citation is a pending application. If this is the case the deferment is entered on the system.

4.1.3 Where deferment has been requested for the purpose of gathering evidence to prove “prior use”, “honest concurrent use” or “other circumstances”, the examiner’s report is checked to ensure that section 44 has been raised.

4.2 Deferment process where a cited trade mark registration is the basis of deferment

4.2.1 Where deferment has been requested for the purpose of gathering evidence to prove “prior use”, “honest concurrent use” or “other circumstances”, the examiner’s report is checked to ensure that section 44 has been raised.

4.2.2 Where deferment has been requested on the grounds that a non-use action has been taken against a cited trade mark, a check should be made that an application under section 92 of the Act has been filed and is in order in respect of at least one of the cited trade marks. The deferment is entered on the system if these details are in order.

4.2.3 Where deferment is sought on the grounds that rectification action has been taken in respect of at least one of the cited trade marks, a check should be made by OIC Hearings Support that such an action has been taken. Citing of copies of documents lodged with the Court would be confirmation of this action. If the action is confirmed, the file under examination should be passed on to Trade Marks Administration Section so that deferment can be recorded on the system.

4.2.4 Where deferment is sought on the grounds that at least one of the cited trade marks is a registration that is un-renewed but is within 6 months after its renewal date, a check should be made that the trade mark is still in the status “expired - renewal possible” rather than “registered” or “removed”. If the status of at least one of the registrations is “expired - renewal possible,” the deferment should be entered on the system.

4.3 Action after the details have been checked

4.3.1 If after checking the details of the grounds for deferment it is found that none are in order, (e.g. the application for the non-use action has not been filed or is not in order) and there are therefore no proper grounds for granting deferment at that stage, a letter should be issued stating that deferment has not been granted and giving reasons why the application was not deferred. The applicant should be invited to respond. If further correspondence clears up the problem then the deferment should be entered. The deferment will begin immediately after the date of the notice of deferment is issued under subreg 4.13(4).

If deferment is sought on more than one ground and one or more of those grounds is in order but others are not then the deferment should be granted and a letter sent out detailing the ground/s on which deferment was granted and the problems with the other ground/s. The applicant should be informed that the refused grounds can be added, subject to time limitations, if the problems with those grounds are overcome.

4.3.2 Once the deferment has been approved a standard notice is issued to the applicant advising them that deferment has been granted (subreg 4.13(4)). This notice is a generic standard notice issued for all types of deferments and states that deferral has been effected as requested by the applicant.

4.3.3 Information is included in the standard notice stating that when deferment is terminated, the amount of time remaining to finalise the application is the same as what was remaining at the time of the request for deferment. Applicants are also advised that they can apply for an extension of time before deferment ends (no earlier than 2 weeks before deferment is due to terminate) if they consider that the time that will remain is insufficient to finalise their application. If an application for an extension of time is made, the extension of time request will be processed once deferment has terminated. The Registrar does not have the power to grant extra time “gratis” to applicants who have insufficient time left after termination of deferment to apply for appropriate extensions of time.