Changes to trade mark opposition practice on extensions of time in opposition proceedings

By David Stewart

5 September 2023

With effect from 31 July 2023, IP Australia published an Official Notice on the interpretation of the “prompt and diligent” ground for extension of time (EOT) for filing evidence in opposition proceedings.

Back in 2013, reg. 5.15 of the Trade Marks Regulations 1995 (“the TM Regulations”) as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (“the RTB Amendments”). These changes were designed to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence.

The Explanatory Statement to the 2013 regulatory changes noted, “A major cause of protracted opposition proceedings is extensions to the various time periods for filing evidence. The law has developed in such a way as to significantly narrow the Commissioner’s [or Registrar’s] discretion to disallow extensions. As a result, oppositions are normally subject to multiple [EOTs] and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.”

This led to a decision by the Patent Commissioner’s delegate in McCarthy v TRED Design Pty Ltd [2013] APO 57 (“TRED”) at [34]-[35] as to how reg. 5.9 of the Patents Regulations (corresponding to reg. 5.15 of the TM Regulations) ought to be approached:

[34] It follows that I need to ask myself the following questions:

1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?

[35] I can extend the time for filing evidence only if I am satisfied that the answers to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.

The requirement that the party seeking the extension of time had to demonstrate that it had acted promptly and diligently at all times in turn resulted in some tough outcomes. Even when a party seeking an extension of time application was a farmer who had to contend with a drought (Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63), the Patent Commissioner was compelled to refuse it if the party seeking the extension of time could not demonstrate prompt and diligent activity at all times.

IP Australia’s Examiner’s Manual now notes, “[K]ey points for parties to have in mind at an early stage (i.e. before the start of an evidence period) include:

Reasonableness of conduct relates to conduct across the whole of the opposition, so it is useful to plan early, where possible, for the filing of evidence, including the consideration of appropriate declarants.

Important to obtaining an extension of time is an explanation of what was done, when it was done, how it was done and by whom. A narrative along with a chronology of actions is typically very helpful.

Acting reasonably at all times, along with being prompt and diligent, is not a standard of perfection. What is required is a reasonable plan executed well, with no significant unexplained delays. An explanation of the circumstances of the case is necessary for a delegate to determine whether a party has been sufficiently prompt and diligent.

Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.

The Official Notice says:

We expect this to significantly lower the evidentiary burden on parties seeking an EOT, and to permit EOT in certain situations that may not have been granted in the past. This would include:

• Mere slips
• Errors in recording follow up dates
• Missing pages
• Unsigned declarations
• Technical errors encountered when submitting evidence

Other genuine errors that are causative of a failure to file when they are in the context of a reasonable plan for the preparation of evidence otherwise executed promptly and diligently.

This is a sensible correction to an otherwise strict interpretation of the regulations.

Disclaimer: The information published in this article is of a general nature and should not be construed as legal advice. Whilst we aim to provide timely, relevant and accurate information, the law may change and circumstances may differ. You should not therefore act in reliance on it without first obtaining specific legal advice.