Under s 36 of the Trade Marks Act, the registrar may defer the acceptance of a trade mark application upon request of an applicant in the circumstances set out in the regulations.
Regulation 4.13 sets out the circumstances (paraphrased by me) as follows:
(i) The applicant is awaiting to see if a pending citation is registered; or
(ii) The applicant is preparing evidence of prior continuous use, honest concurrent use or other circumstances (such as negotiating a letter of consent); or
(iii) The applicant has applied for removal for non-use of the cited mark; or
(iv) The applicant has begun proceedings to have the Register or the Record of International Registrations rectified; or
(v) is waiting out the 6 month late renewal period for a citation that was not renewed by the deadline.
There is a notable absence.
If an international registration is cancelled or limited, the IRDA will be cancelled or limited to the same extent within 3 months of the change being recorded by WIPO. Despite this, there is no basis for requesting deferment while you wait out this 3 month period (or any easy way of knowing there has been a change to the international registration of which the IRDA is a designation, as this is not shown on the Australian trade marks database at all). Therefore, your client’s trade mark application could lapse, even though you know that in a short window of time the cited mark will be cancelled and no longer present an obstacle. For national applications, you would file a divisional to overcome this problem, but for IRDA’s where divisionals are not possible, once you have applied for the maximum period of extensions, there is little you can do.
In such circumstances, we might need to get creative and apply for removal under s 92(4)(a), as that would at least provide you with a basis for deferment for your pending IRDA, until the cited IRDA is limited or cancelled to the extent of the international registration of which it is a designation.
That is, with a bit of lateral thinking, we will help you find a workable solution. There is usually a way. It just requires someone with the experience and problem solving skills to think of a work around.
If you have questions about your trade mark matters, reach out to Tarr Law. We love to analyse the circumstances of your application and provide you with strategic advice as to the best way forward for your matter.