Every country has its own quirks when examining applications, and Australia is no different. There are areas in Australian trade mark prosecution that commonly trip up overseas practitioners and do not have equivalents in most other jurisdictions.
This article examines four areas of prosecution to be aware of and how to make them work for you and your clients.
When is a deadline, not a deadline?
When national applications or Australian designations are examined and an objection is raised, the examiner will set a deadline of 15 months from the date of the first adverse report. But, the deadline set by the examiner is different from the deadline for responding to the objections. Rather, it is the deadline to overcome all objections and for the examiner to accept the application.
The examiner requires 20 working days to review and accept an application. So, any response needs to be filed at least one month before the deadline. If there is uncertainty that the response will resolve all the issues, then we recommend filing the response at least four months before the deadline. This is because if you file a response and the examiner maintains the objection, they will not give the applicant extra time. Filing a response at least four months before the 15 months deadline, gives the client 2-3 months to file another response (if required), plus give the examiner the required one month.
Extensions of time are available, but this can cause costs to quickly add up as there is an official fee of AU$100 per month. Understanding how the deadline works avoids these costly fees.
Deferments and using them to your advantage
If an adverse report has been issued, an application can be put on hold by requesting a deferment of acceptance. Deferments can be filed at any time during the examination process. There are a number of grounds on which an applicant can request deferment. What’s great is that applicants can request multiple deferments provided a different ground is sought each time. Some of the most common deferment grounds are when a citation has been raised. These grounds and the time limits include the following.
- When the cited mark is pending, it can be deferred until the cited mark is withdrawn, refused or registered
- When the applicant is looking to file evidence of honest concurrent use or prior use of their mark, the application can be deferred for six months.
- When the applicant has filed a non-use action against the cited mark, the application can be deferred until the non-use action is finalised.
- When consent is being sought from the cited owner, the application can be deferred for six months.
- When a citation has been raised and the citation has not been renewed but is within the six-month grace period, the application can be deferred until the registration is renewed or the grace period ends without renewal.
One stumbling block to be aware of is that after deferment has been terminated, the time left will be the amount of time that was remaining when the deferment of acceptance was filed. So, it’s important to file deferments as soon as possible and avoid filing them right before the deadline.
The main advantage to a deferment is that there are no official fees- unlike an extension of time where there is an official fee per month. When there is a citation which looks like it will involve lengthy negotiations or there are multiple citations, it’s a smart tactic to start filing deferments early on to buy applicants more time in a cost-effective way.
Prior use
Australia is a first to use country. But, IP Australia also expressly allows for applicants to file evidence of prior use to overcome a citation. The applicant needs to file evidence that the trade mark was continuously used in Australia before the priority date of the cited mark. The evidence is filed in the form of a statutory declaration. Filing prior use is a ground for deferment so this request should be filed as soon as the applicant starts exploring this option.
If IP Australia accepts the application on the basis of the evidence of prior use, it will notify the owner of the cited mark. The cited owner can then oppose the application.
Having this option available to applicants is important now that we are seeing more citation objections being raised by IP Australia. Conversely, it’s also crucial for registered owners to carefully consider their options if they receive notification from IP Australia that a similar mark has been accepted because of prior use.
Is it accepted or not?
IP Australia can provisionally accept an application, but it will not formally accept and advertise the application until the six-month convention period has ended.
When an application has been provisionally accepted, IP Australia will issue a notice entitled ‘This trade mark application has been accepted early’. It explains
that it wants to honour the priority date of applications from convention countries and gives a date after which the application will be accepted/advertised and the formal notice of acceptance will be issued. The status on the IP Australia Register will show as ‘Accepted – Awaiting Advertisement’. Once the notice of acceptance has been issued, the status will change to ‘Accepted’.
For the same reason, the earliest an Australian application can proceed to registration is 7.5 months after the priority date.
Having a good grasp of these four unique IP Australia prosecution frameworks will ensure your clients have the best chance of securing a registration and also avoid extension of time fees.
This article was written for the ECTA Bulletin (March edition).
