Turning Back Time  – Extensions of Time to Respond to Adverse Reports in Trade Mark Applications

Running out of time to respond to an Adverse Report when making a Trade Mark application can have severe consequences, including the abandonment of the application and the potential loss of exclusive rights to your proposed Trade Mark.  This could be detrimental to your business or brand, especially if the Trade Mark is crucial for your identity in the marketplace.  As an applicant, you need to be mindful of the deadlines in this process, manage your time effectively and seek professional assistance in a timely manner if needed, to ensure the continued progress of your application and to protect your valuable intellectual property rights.  Fortunately, it is possible to obtain extensions of time to respond to an Adverse Report.

What is an Adverse Report?

Upon filing your Trade Mark application with IP Australia – the Australian Government agency that administers intellectual property registrations nationwide – a Trade Mark examiner will review your application to ensure the proposed mark meets the requirements under the Trade Marks Act 1995 (Cth).

If any issues are identified, the examiner will issue an Adverse Report to you, as the applicant, detailing the reasons why the application does not meet the requirements of the Trade Marks Act 1995 (Cth).  If these identified issues are not addressed, then your application will lapse.  There are many reasons why a Trade Mark application may be rejected, including that the proposed mark is too similar to previous registrations, bears a lack of distinctiveness, it is a prohibited or scandalous sign, or it is not compliant with other legal standards under legislation that may be associated with the proposed registration.

In any case, as an applicant you will have 15 months from the date the Adverse Report is issued to address the issues identified in the Adverse Report.

Seeking an extension of time

If you have missed this 15-month deadline provided by IP Australia to address those issues contained in an Adverse Report, or the deadline provided for a response is fast approaching, then fortunately there are avenues through which you can extend the time to respond.

Pursuant to Regulation 4.12 of Trade Marks Regulations 1995 (Cth), prospective applicants can request an extension of time with IP Australia in two separate circumstances:

1. For Early Extension Period applications: Applications made up to 6 months after the lapsing of the deadline (i.e. in the period of 15 to 21 months after the date of the Adverse Report) are relatively straightforward. This request for extension of time will not appear on public record and will incur fees of $100, per additional month sought.
2. For applications made later than this, that is, more than 6 months after the deadline onwards (i.e. over 21 months after the date of the Adverse Report): Applicants are required to submit a declaration to IP Australia providing reasons for the delay and why an extension should be granted in the circumstances.  Under regulation 21.25 of the Trade Mark Regulations 1995 (Cth), this declaration will need to set out the facts on which the grounds specified in the application are based, as well as the reason why the application was not made before the period ended.

Summary

Running out of time to respond to an Adverse Report can happen – although this is not something most applicants would like to make a habit of.  With the numerous steps involved in making a Trade Mark application, the entire process can be overwhelming and complicated.  Rest assured, with the appropriate supporting material, deadline management and expert guidance, the application process can be made clear and extensions of time to respond to an Adverse Report can be approved.  So rather than allowing your application to be deemed abandoned and losing the opportunity to proceed with your current Trade Mark application, you can take steps to seek an extension and then address the issues identified in the Adverse Report accordingly.

The team at Frenkel Partners can provide tailored advice to companies or individuals seeking to make Trade Mark applications, as well as those seeking extensions of time to respond to an Adverse Report. Early intervention and strategic planning can ensure your proposed Trade Mark has the highest prospects of a successful registration.  Our solicitors with Trade Mark expertise can guide you through the entire process – from preparing applications with expert guidance, to overcoming any Adverse Reports or other issues which may arise throughout the application process (including seeking extensions of time), through to registration and renewal.

Our commercial law team is also able to provide comprehensive assistance across a full suite of intellectual property matters. For more information, please visit our Commercial page or contact firm@frenkels.com.au.