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 time.

The new regulations provide as follows:

“The registrar may extend the period only if the registrar is satisfied that:

  1. The party:
    1. has made all reasonable efforts to comply with all the filing requirements and
    2. despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so or
  2. There are exceptional circumstances that justify the extension.”

Exceptional circumstances are defined to include:

  1. “A circumstance beyond the control of a party that prevents the party from complying with a filing requirement
  2. An error or omission by the registrar or an employee that prevents a party from complying with a filing requirement
  3. 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 and

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 evidence.

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 with.

This article first appeared in World Trademark Review, 5 June 2014.