17.3. Period of deferment and termination

The period of deferment will differ depending on the circumstances under which deferment was granted. These periods of deferment are detailed at Annex A1.

3.1 The period for which the acceptance of an application is deferred begins from the date deferment was requested. However, the status of the trade mark will only be updated to Deferred when the request is processed. Correspondence will also be issued on the same day the request is processed.

3.2 Generally speaking, the deferment period ends when the application is withdrawn (subreg 4.14(2)(a)), or when the Registrar is satisfied that there are no longer any grounds for rejecting the application under subsection 44(1) or (2) of the Act and therefore withdraws the citation (subreg 4.14(2)(b)), or if these do not apply, in accordance with the rules laid down in subregulation 4.14(3).

3.3 Where deferment has been granted on the basis that a pending application constituted a citation against the application and proceedings regarding the pending application had not been finalised, deferment will end when the proceedings in relation to the cited application are finalised, that is, the cited application is withdrawn, rejected, refused, lapses or is registered (subreg 4.14(3)(a)).

3.4 Where deferment has been granted on the basis that the applicant is seeking to overcome a citation on the basis of “honest concurrent use”, “prior use” or “other circumstances”, the deferment will be until the Registrar withdraws the citation or for a period of 6 months (subreg 4.14(3)(b)), from the deferment request date.

3.5 Where deferment has been granted on the basis that the applicant has filed an application for the removal of a cited trade mark on the basis of non-use, the deferment will end when proceedings in respect of the action for non-use have been finalised (subreg 4.14(3)(c)).

3.6 Where deferment has been granted on the basis that the applicant has taken a rectification action against the owner of a trade mark that has been cited against their application, the deferment will end when the rectification proceedings have ended (subreg 4.14(3)(d)). Hearings Support will advise the CEG Trade Mark & Designs Administration section that the rectification action has been finalised. The system will be updated and deferment will terminate on that day.

• Part 42 Rectification

3.7 Where deferment has been granted on the basis that a citation that is un-renewed but is within 6 months of its expiry date, the deferment will end on the date the cited trade mark is renewed or removed (subreg 4.14(3)(e)).

3.8 Where deferment has been granted on the basis that the time during which proceedings under a provision of the Act could have been brought in a prescribed court has not ended, or that the time for an application to be made to the ART for review of a decision of the Registrar in relation to the application has not yet ceased, deferment will cease 2 months after the beginning of the period when the proceeding could have been brought or the application for review made (subreg 4.14(3)(f)).

3.9 Where deferment has been granted on the basis that proceedings under a provision of the Act have begun in a prescribed court or an application has been made to the ART for review of a decision of the Registrar in relation to the application, deferment will cease 3 months after the determination or other disposal of the proceedings or review, or such time as the court or ART allows (subreg 4.14(3)(g)).

3.10 Where deferment has been granted on the basis that the applicant has made a request to the Registrar to be heard in relation to the application (subreg 4.14(3)(ga)), deferment will cease at the end of the earlier of: 

(i) the day the applicant withdraws the request to be heard; and 

(ii) the day the Registrar decides to accept or reject the application. 

Note: If an appeal of the Registrar’s decision is filed with a court, acceptance will be deferred until the end of those proceedings, under subregulation 4.13(2)(b).

3.11 Where deferment has been granted on the basis of written notification of the applicant’s death, deferment will cease at the end of the period that the Registrar reasonably regards as sufficient in the circumstances (subreg 4.14(3)(h)). This period will generally be set at twelve months from the date of the notice of deferment. A bar to lapsing will be put on the application and the period of deferment set. A manual diary entry will be made so that the deferment can be terminated at the appropriate time.

3.12 Where deferment has been granted on the basis that an application has been sent to the Australian Competition and Consumer Commission (ACCC) and the ACCC has granted a certificate under section 175(2) of the Act, deferment will end when the Registrar decides to accept the application (subreg 4.14(3)(j)(i)); or

3.13 Where the ACCC has refused to issue a certificate, deferment will end two months after the date of the notice to the Registrar under subsection 175(4) of the Act (subparagraph 4.14(3)(j)(i)).

3.14 Where the deferment is based on multiple grounds, the deferment will be terminated when the last ground for deferment has been finalised. 

3.15 If only one of multiple grounds for deferment ends, a standard notice is sent to the address for service stating that the deferment has been amended due to one of the grounds changing. The notice also advises that deferment has not yet been terminated.

3.16 On termination of deferment, a standard notice will be automatically sent to the address for service stating that deferment has been terminated. The notice will also provide the new acceptance due date and advise the applicant to notify the Registrar if the application is now clear to be accepted or make further submissions, if there are still outstanding matters, or to apply for further extensions of time for acceptance, if needed.