Epoch Company Ltd v Flowil International Lighting (Holding) B V [2011] NZIPOTM 38

This recent New Zealand trade mark opposition decision confirms that there must be exceptional circumstances in order to justify an extension of time to serve evidence in trade mark opposition proceedings. As the deadlines to serve evidence in a New Zealand trade mark opposition are reasonably short, the decision reinforces the importance of moving swiftly in New Zealand opposition proceedings.  

Flowil International Lighting (Holding) B V ("Flowil") opposed registration of Epoch Company Ltd's ("Epoch") application No. 829490 for "Sylvanian Families". After obtaining one extension and serving part of its evidence in support of the opposition, Flowil applied for a further two week extension of time. The Intellectual Property Office of NZ proposed to grant the extension and to allow a further extension on its own initiative. Epoch objected to these extensions and requested a hearing.

The law in New Zealand relating to extensions Regulation 32 of the NZ Trade Mark Regulations states that:  

The Commissioner may, if satisfied in a particular case that there are genuine and exceptional circumstances that justify an extension of time, extend the time specified by these regulations for a step to be taken, except where these regulations stipulate that time must not be extended.  

In applying that regulation to Epoch's objection, the Assistant Commissioner of Trade Marks referred to the judgment of Justice Hammond in Awa v Independent News Auckland Limited1 and agreed that the term "exceptional circumstances" is "usually construed as meaning something like 'quite out of the ordinary' and obviously the onus must be on the applicant to establish entitlement in face of the statutory language".  

The Assistant Commissioner held that a party seeking an extension of time must establish that there are genuine and exceptional circumstances, which are to be assessed as a matter of fact, not a matter of judicial discretion. The circumstances must also establish a causal link between the circumstances and the need for an extension of time.

The grounds relied upon for the extension to serve evidence

In this case the specific grounds which Flowil's attorney relied upon for its contested objections were as follows:

We are still awaiting further evidence from the opponent [Flowil] concerning their international operations. At this point the extent of this evidence is uncertain and therefore we are requesting a short extension of time of two weeks from 8 August until we have further information.

The grounds set out below are reiterated, as is the offer to reciprocate consent to additional time sought by the applicant in due course. We do note, however, that Europe is currently in the middle of the traditional summer holiday period akin to NZ’s Christmas/New Year break and this no doubt will effect [sic] the turnaround times in supplying information.

Epoch objected on the basis that these circumstances were not exceptional. The Assistant Commissioner noted that if the relevant regulations required only "genuine and reasonable circumstances" then Flowil would have satisfied the requisite criteria. However the Assistant Commissioner concluded that the facts relied upon by Flowil fell short of "exceptional circumstances." As such, the Assistant Commissioner did not go on to consider whether or not to exercise her discretion under regulation 32.  

Lessons for trade mark opponents in New Zealand

The case demonstrates that New Zealand opposition deadlines will be strictly enforced, and that extensions of time may only be available in exceptional circumstances. This contrasts sharply with Australian trade mark opposition proceedings, in which extensions of time of up to six months are easily obtained.

In practice, parties to New Zealand opposition proceedings should consider agreeing to suspend the proceedings if they are genuinely involved in negotiations to attempt to resolve the matter. If one party decides to play "hardball" and not consent to the opposite party's request for an extension of time then it will need to be prepared to meet its own tight evidentiary deadlines, as any extension request may otherwise be contested successfully.