4. Timing

Date Published

4.1

An accepted trade mark application may be registered at any time within the six month period after advertisement of acceptance in the Official Journal provided for under reg 7.1.

Note that a trade mark cannot be registered until at least seven and a half months after its priority date. This is to honour the Office’s international obligations in respect of convention claims under which the Office will recognise the filing date of overseas applications in convention countries for up to six months. Accordingly it is office practice not to advertise acceptance of an application until at least five months after the filing date. Therefore if the application has been accepted early (within the first two months after the filing date) the trade mark system will not allocate an advertisement date until at least five months from the filing date.

Registration is subject to the condition that there has been no opposition, or in the case of opposition (or appeal from an opposition decision), the final decision has been that the trade mark should be registered.  As the period allowed for filing a notice of intention to oppose is two months from the date of advertisement of acceptance in the Official Journal, the period within which a trade mark may be registered effectively runs for four months from the end of the opposition period.  The registration period is, however, extendible (either before, or after it has expired) under the provisions  of section 224.


4.2

There is no fee to register a trade mark, other than the initial application costs.

However, applications lodged prior to Monday 10 October 2016, will still need to pay a registration fee. The registration fee can be paid at any time prior to the registration of a trade mark. It is however, expedient for this registration fee to be paid as soon as possible after acceptance of the trade mark application, so that registration may occur within 10 working days after the end of the opposition period (subject to no opposition having been filed).


4.3

Subregulation 7.1(2) provides for the final date for the registration of a trade mark to be extended (without fee) by either a prescribed court or the Administrative Appeals Tribunal, if there are proceedings relating to the trade mark before them at the time.


4.4

Under subregulation 7.1(3), the Registrar may also extend the period (without fee) in the case of opposition proceedings, when he or she is satisfied that registration cannot take place within the time allowed, and it is appropriate in the circumstances to grant the extension.  If the outcome of the opposition proceedings is that the trade mark may be registered, but the registration fee has not yet been paid, the Registrar will allow a further period within which registration can be completed.


4.5

Subregulation 7.1 also provides for the Registrar to extend the registration period in cases where the applicant has died.  This extension may be for twelve months, or longer as the Registrar directs (paragraph 7.1(1)(b)).


4.6

The Registrar may also extend the registration period under section 224.


4.7

If the registration period has not been extended in any of the ways described above, and/or the registration fee has not been paid, the application will lapse.