Three short sections of the Trade Marks Act (Chapter 385) govern the interval between examination and registration. Each carries a practical consequence out of proportion to its length.
Section 37 — notice and advertisement
(1) On acceptance of an application, the Registrar shall give written notice of the acceptance to the applicant.
(2) The applicant shall cause the acceptance to be advertised in the prescribed manner.
Section 37(2) puts the obligation on the applicant. Nothing moves until the advertisement is placed — and because the opposition period under section 40(1) runs from the date of advertisement of the acceptance, an application that is never advertised never reaches the point at which it can be registered under section 44.
Diary the advertisement as soon as the notice of acceptance arrives, and keep proof of publication — it fixes the date from which every subsequent period runs.
The advertisement performs the public-notice function of the scheme. It is what allows a trader with an earlier mark or an earlier reputation to find out that a conflicting mark is about to be registered, and to oppose it before rather than after the fact.
The timetable from acceptance
| Step | Period | Provision |
|---|---|---|
| Written notice of acceptance to the applicant | — | s 37(1) |
| Applicant advertises the acceptance | In the prescribed manner | s 37(2) |
| Notice of opposition may be given | 3 months from advertisement, or such further period as the Registrar allows on application made within that period | s 40(1) |
| Copy of the notice served on the applicant | On or before the date it is given to the Registrar | s 40(2) |
| Applicant’s counter statement | 3 months from service | s 40(3) |
| Registration, if no opposition or opposition withdrawn | After the opposition period expires | s 44(1) |
| Registration, where an opposition is decided for the applicant | After the period allowed for appeal | s 44(2) |
| Date of registration | The date of lodgement of the application | s 45 |
Section 94 gives the Registrar a general power to extend a time specified by the Act, either before or after its expiration, unless otherwise expressly provided. Section 40(1) is one of the places where the Act does provide otherwise: an extension of the opposition period requires an application made within the original three months.
Acceptance is not registration
Where, after acceptance but before registration, the Registrar is satisfied that the application was accepted in error, or that in the special circumstances of the case the mark should not be registered or should be registered subject to conditions or limitations, or additional or different ones, he may withdraw the acceptance and proceed as if the application had not been accepted.
Section 44 makes registration expressly subject to section 33(6), in both the unopposed and the opposed case. In practice this is how a third party’s letter drawing the Registrar’s attention to an earlier mark can take effect even without a formal opposition — and it is why an applicant should not commit to a launch on the strength of acceptance alone.
Section 38 — withdrawing the application
An applicant may, at any time before the trade mark is registered, withdraw his application.
An unqualified right, exercisable at any stage. Withdrawal is worth considering where:
- an opposition has been filed by a party with a strong earlier right, and the cost of defending exceeds the value of this particular mark — bearing in mind that under section 5(1)(d) the Registrar may award costs against a party;
- the business has changed and the specification no longer reflects what is sold; or
- a settlement with an opponent is reached on terms that one application will be withdrawn and another proceed with a limitation.
Where only part of the mark or part of the goods is in difficulty, section 34 allows a further application for a separately registrable part, or for goods included in the original description, which the Registrar may direct to be deemed lodged on the original date. But that must be done before acceptance or refusal — so the option has usually closed by the time an opposition arrives.
Section 36 — lapse on refusal
Where the Registrar refuses to accept an application, he shall give written notice of the refusal to the applicant and, subject to any appeal from the Registrar’s decision, the application shall lapse.
Lapse is not the same as refusal on the merits. It means the application is at an end: there is nothing left to amend, argue or revive. The only route to preserve it is an appeal to the National Court under section 33(7)(b), on which the Court may under section 82 admit further evidence and affirm, reverse or modify the decision.
The date. Under section 45 the date of registration is the date of lodgement, so a fresh application filed after a lapse ranks behind everyone who filed in the meantime — and may itself be blocked under section 24 by a mark filed during the gap.
That is why the section 33(5) offer to treat a Part A application as a Part B application should almost always be accepted: it preserves the original date, where refusal and lapse destroy it.
After acceptance — a short checklist
- Advertise promptly, in the prescribed manner, and keep proof of publication.
- Diary three months from the advertisement for the close of the opposition period.
- Keep your address for service current under section 97 — a notice of opposition served there is effective whether or not it reaches you.
- Do not treat acceptance as final for launch purposes; section 33(6) allows acceptance to be withdrawn.
- Watch the advertisements yourself, for competitors’ marks that affect you.
- Once registered, start the use record — the three-year clock in section 14 begins to matter immediately.
Sources
- Trade Marks Act (Chapter 385) — ss 5, 14, 24, 33–38, 40, 44, 45, 82, 94, 97
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.