17.2. Circumstances under which deferments will be granted

Deferments will be available, in specific circumstances, either on the applicant's request or on the initiative of the Registrar. The period of deferment will depend on the ground of deferment. 

The discretion as to whether deferment is granted, except in the case of matters being sent to the Australian Competition and Consumer Commission (ACCC), lies with the Registrar (section 36 and subreg 4.14(4)).

2.1 Grounds upon which an applicant may apply for deferment

2.1.1 Where a citation has been raised against an application under subsection 44(1) or (2) on the basis of a prior application/s and the applicant is awaiting finalisation of the cited application/s (subreg 4.13(1)(c)(i)). The Registrar will exercise their discretion not to grant deferment under this provision where two applications are cited against each other that have the same filing date.

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

2.1.2 Where a citation has been raised against an application under subsection 44(1) or (2) and the applicant is seeking to establish “honest concurrent use”, “prior use” or “other circumstances” of their own trade mark under subsections 44(3) or 44(4) respectively (subreg 4.13(1)(c)(ii)).

•    Where multiple citations have been raised, it is expected that evidence of use or other circumstances be gathered concurrently for all citations. That is, an application for deferment under subregulation 4.13(1)(c)(ii) applies to all citations collectively and is not applied separately to each citation.

•    If deferment of acceptance has been previously granted under subregulation 4.13(1)(c)(ii), then changing to another approach still covered by this provision, such as shifting from gathering evidence of “prior use” to “other circumstances”, is not regarded as a new reason for a new deferment application.

2.1.3 Where a citation has been raised against an application under subsection 44(1) or (2) and the applicant has filed, under section 92 of the Act, a non-use application in respect of a trade mark that has been cited against the applicant's trade mark and the applicant is awaiting the finalisation of the non-use application (subreg 4.13(1)(c)(iii)).

2.1.4 Where a citation has been raised against an application under subsection 44(1) or (2) and an action by the applicant for rectification of the Register regarding the cited trade mark is pending (subreg 4.13(1)(c)(iv)).

2.1.5 Where a citation has been raised against an application under subsection 44(1) or (2) and the cited trade mark is un-renewed but is within 6 months of its expiry date under the terms of section 79 of the Act (subreg 4.13(1)(c)(v)).

2.2 Grounds upon which the Registrar, on their own initiative, may defer acceptance of an application (subreg 4.13(2))

2.2.1 Where, in regard to an application for registration of a trade mark, there is time for an appeal under any provision of the Act or Regulations to be brought or for an application for review to be made to the Administrative Review Tribunal (ART) (subreg 4.13(2)(a)).

2.2.2 Where appeal proceedings under a provision of the Act have begun in a prescribed court in relation to the application (subreg 4.13(2)(b)).

2.2.3 Where an application has been made to the ART for review of a decision of the Registrar in relation to the application (subreg 4.13(2)(c)).

2.2.4 Where the applicant has made a request to the Registrar to be heard in relation to the application (subreg 4.13(2)(ca)). Typically, this relates to ‘ex parte’ hearings on the examination of an application. 

2.2.5 Where the Registrar has been informed in writing that the applicant has died (subreg 4.13(2)(d)).

2.2.6 Where, in the case of a certification trade mark, the Registrar sends a copy of the rules governing use of the certification trade mark to the Australian Competition and Consumer Commission (ACCC). The Registrar has no discretion as to whether deferment is granted - they must defer acceptance in this circumstance (subreg 4.13(3)).

2.3 Deferment for one or more reasons may be requested at any time within the prescribed period for lapsing.  If the application is deferred for more than one reason (e.g. 2 cited trade marks are pending) and one of those reasons changes (e.g the status of one cited trade mark changes to Registered) the deferment will be automatically amended and the applicant will be advised that the deferment has been amended.

2.4 Deferment can be requested numerous times provided that the reason is different each time.​

2.5 Deferment can be amended/modified at any time to add another reason while still in deferment.