IPA trademark 1.-introduction2 — IP Australia Trade Marks Manual of Practice and Procedure – Part 18.1. Introduction

Trade Marks Act 1995 Trade Mark Regulations 1995 The steps that may be involved in the processing of an application for registration are set out here. 1.1 The application may be accepted , meaning that, after examination of the application, the Registrar or the Registrar's delegate is not satisfied that the application has not been made in accordance with the Act (see section 6 definition), or that there are grounds for rejecting it (subsection 33(1)). The acceptance of the application is published for the purposes of opposition (section 34). The application then proceeds through a two month opposition period (which may be extended) during which its acceptance may be challenged. At the end of the two months (or that period as extended), if no opposition has been filed, or if an opposition has been unsuccessful, the application may proceed to registration. Part 39 Registration of a Trademark Part 47 Procedures for Opposing Registration or Protection 1.2 The application may be rejected , meaning that, after examination of the application, the Registrar or the Registrar's delegate is satisfied that the application has not been made in accordance with this Act (see section 6 definition), or there are grounds for rejecting it, and after giving the applicant an opportunity to be heard, has rejected the application (subsections 33(3) and (4)). The rejection of the application is published (section 34). Part 52 Hearings, Decisions, Reasons and Appeals 1.3 The application may be withdrawn , meaning that the person who made the application for registration, or a person to whom the right or interest relied on in making the application has been passed, has given notice to the Registrar to withdraw the application (section 214). This process is different from lapsing in that the application is finalised completely from the date of the notice of withdrawal. Before a notice of withdrawal of an application for a trade mark can be processed, it is important the intention of the applicant is clearly stated, ("I request that my application be withdrawn ...") as the differences between actively seeking to withdraw an application and merely allowing it to lapse are significant for both the applicant and the Office. Part 7 Withdrawal of Applications, Notices and Requests 1.4 The application may lapse meaning that: the application has not been accepted within the prescribed period of 15 months, or within any period of extension which may have been applied and paid for (or otherwise granted by the Registrar) after that time (subsection 37(1)); or the trade mark subject of an accepted application has not been registered within the period allowed for registration (subsection 68(1) and reg 7.1). Part 16 Time Limits for Acceptance of an Application for Registration Lapsed applications can be revived under section 224 by way of a late application for extension of time if justified in the circumstances and appropriate fees are paid. The applicant who allows the application to lapse will also be sent any applicable notices. Note: An application may lapse before or after acceptance. In determining the 15 month period, no account is taken of any period for which acceptance is deferred (regulation 4.12). A basic period of six months is allowed for registration after acceptance. The period can be varied: Where there have been opposition proceedings where the application is subject to proceedings before a court, the Administrative Review Tribunal or the Registrar (opposition); or where the applicant has died. ​​​​​​​​​​​​​​Ordinarily, the six month period is calculated from the date acceptance is published. If there has been an opposition or an extension of time to file a Notice of Opposition, the registration fee must be paid within the time limit set by the Registrar (usually three months from the end of opposition proceedings). ​​​​​​​