There has been a significant change in the practice of the
Intellectual Property Office of New Zealand ("IPONZ") in
granting extensions of time in trade mark proceedings.
Up until December 2009, IPONZ usually granted extensions of time
(to file evidence, for example) as long as the application the was
filed on or before the applicable deadline. Occasionally, if an
application was made after the applicable deadline, IPONZ would
still grant the extension provided there were genuine and
exceptional circumstances. In December, however, his Honour Justice
Lang held in Muir Electrical Company Pty Ltd v The Good Guys
Group Ltd ("Muir") that the Trade Mark
Regulations 2003 did not permit the granting of general extensions
of time if they were applied for after the applicable deadline (ie
Muir concerned an application by the Good Guys Group to
revoke a number of trade marks owned by Muir Electrical for
non-use. During the revocation process, the Good Guys Group
accidentally failed to notify IPONZ that it did not intend to file
evidence in support of its revocation action. Having realised its
error after the deadline for doing so has passed, the Good Guys
Group applied for a retrospective extension of time to provide the
notification. The Assistant Commissioner granted the retrospective
extension using the broad discretion conferred by Regulation 32 of
the Regulations. Muir Electrical appealed to the High Court.
There were two issues in the case:
Whether the Commissioner had the power to grant extensions of
time retrospectively; and
If 'yes', whether the circumstances in this particular
case qualified as 'genuine and exceptional circumstances'
under Regulation 32.
In his decision delivered on 18 December 2009, his Honour
Justice Lang held that:
The Commissioner has no power to grant extensions
Extensions for filing Notices of Opposition need to be applied
for and granted before the applicable deadline expires; and
"Genuine and exceptional circumstances" means that
the circumstances giving rise to the need for the extension must be
authentic and "quite out of the ordinary".
Before this decision, the Commissioner had granted several
retrospective extensions of time under the Regulations on the basis
that, if the Regulations did not expressly forbid doing so, the
Regulations impliedly granted the power to do so. Following
Muir, there is no power at all to grant extensions
retrospectively and the applicable deadline must be adhered to. It
is likely that the practice at IPONZ regarding trade mark
extensions will now change as a consequence of Muir.
The moral of the story is - keep an eye on your diary!"
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2009 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
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