Changes to the regulations governing extensions of time in
trademark opposition proceedings in Australia came into effect on
April 15 2013 as a consequence of the Raising the Bar legislation.
The Australian Trademarks Office has now issued its first decision
(MG Icon LLC v Caprice Australia Pty Ltd) on whether to
grant an extension under those provisions. The decision indicates
that it will now be very difficult to obtain any extensions of
The new regulations provide as follows:
"The registrar may extend the period only if the
registrar is satisfied that:
has made all reasonable efforts to comply with all the filing
despite acting promptly and diligently at all times to ensure
the filing of the evidence within the period, is unable to do so
There are exceptional circumstances that justify the
Exceptional circumstances are defined to include:
A circumstance beyond the control of a party that prevents the
party from complying with a filing requirement
An error or omission by the registrar or an employee that
prevents a party from complying with a filing requirement
An order of a court or direction by the registrar that the
opposition be stayed."
In the decision issued, considerations such as the fact that the
rules governing opposition proceedings changed during the course of
proceedings (meaning that stricter timeframe rules apply to new
evidence compared to those that governed the previous evidence),
and the fact that during the opposition there was a sale of a
business, did not constitute exceptional circumstances that would
permit the granting of an extension of time. Neither were
considerations such as the following considered relevant to an
assessment of whether an extension should be granted:
Claims of highly probative evidence being filed "just days
after a deadline"
The evidence having been filed by the time there was an
objection, meaning that there was no effective delay and the only
motivation for objection being the exclusion of probative evidence
The admission of probative evidence being inconsistent with the
philosophy of the Trademarks Act and amendments introduced.
The registrar is only concerned with assessing whether the party
has acted promptly and diligently at all times.
With regard to the steps taken, there was quite a detailed
chronology provided that included comments about time pressures and
the volume of records needed to be assessed, as well as absence due
to international travel for business reasons. However, factors such
as work absence or annual leave are not considered unforeseen
events and do not justify delay. Difficulties with email accounts
contributed to the delay but did not excuse it.
The requirement for obtaining an extension of time is to
establish "prompt and diligent action at all times" to
ensure that the evidence is prepared and filed in time. The
assessment of whether prompt and diligent action has been taken
"at all times" now places a high burden upon parties to
ensure industrious and dedicated attention to gathering and
preparing evidence within the three months allocated for evidence
in support or evidence in answer. Otherwise, it is to be expected
that no extension will be granted and the opportunity to file
evidence will be lost.
While previous provisions relating to the granting of extensions
of time were arguably unduly lenient, the rules now governing
extensions of time in oppositions are quite restrictive.
The Trademarks Office Manual indicates that delay due to
negotiations will not be considered a reason that justifies an
extension of time. However, a cooling-off period of up to 12 months
will be allowed if both parties consent to suspend the proceedings.
Arguably, 12 months is unduly limiting when there are complicated
international agreements being sought; however, 12 months is the
maximum time allowed.
If parties are negotiating, the party with responsibility to
serve evidence will be well advised to obtain the other party's
consent to suspend the proceedings at an early point in the
negotiation process. If consent is not obtained, and the party
concerned does not leave itself sufficient time to prepare evidence
before the deadline, it may find itself precluded from filing
The decision issued means that the changes introduced should
achieve the aim of reducing delays in opposition proceedings, but
some parties may find the requirements difficult to comply
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.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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