Don’t miss out on your chance to oppose a trade mark application in New Zealand – New IPONZ practice regarding extensions of time to file a Notice of Opposition

In Uncategorized on February 26, 2010 at 1:24 pm

Following the advertisement of an application for registration of a trade mark in the Patent Office Journal, third parties have an initial period of three (3) months to file a Notice of Opposition or to seek an extension of time to file the Notice of Opposition – see Regulation 75 of the Trade Mark Regulations 2003.

Regulation 75(2) provides that

The Commissioner may, if requested, extend the deadline for filing a notice of opposition—”.

(a) by up to 1 month, without the applicant’s consent; and
(b) by up to 2 months, with the applicant’s consent

Thus, an extension of one month is allowed as a matter of course and it is not necessary to seek the Applicant’s consent to such an extension.

Regulation 75(3) then provides that “The Commissioner must not extend the deadline after the deadline has expired”.

I think that it would be fair to say that there has been an assumption that this means that the extension must be requested before the deadline has passed and that the Commissioner could not grant an extension of time if it had been filed after that deadline. However, following a recent High Court decision, this assumption has been turned on its head. In that decision the Court noted

Importantly, however, Regulation 75(3) prohibits the Commissioner from extending the deadline after the deadline has expired. I take the effect of this to be that the Commissioner has no power to extend the date for filing a notice of opposition unless the extension is both requested and granted before the expiry of the three month deadline contained within Regulation 75(1)” (see paragraph 31 of the decision).

Now that the appeal deadline has passed, the Intellectual Property Office has issued a practice guideline regarding the seeking and granting of extensions of time for filing a Notice of Opposition under Regulation 75.

In particular, the guideline states that “The Hearings Office will endeavour to consider and process an extension of time for filing a notice of opposition within 5 working days”. Further, “The Hearings Office will take all reasonable steps to ensure that extension of time applications that are received less than 5 working days prior to the deadline are considered and determined prior to the expiry of the deadline. However, no guarantee can be provided that such applications will be able to be processed in time – especially in cases where applications are received on the final day before expiry of the deadline”.

The full practice guideline can be viewed here.

The Court’s finding is strictly obiter as the case did not deal with the issue of an extension of time to lodge a Notice of Opposition, but rather an extension to file evidence in revocation proceedings. With new Trade Mark Regulations being drafted to deal with New Zealand’s accession to the Madrid Protocol, it is highly likely that Regulation 75 will be amended to overcome the chance in practice bought about as a result of the High Court’s decision.

However, in the interim, the IPONZ practice guideline make it clear that extensions of time to file a Notice of Opposition must be filed in a timely manner to ensure that the Hearings Office of IPONZ has sufficient time to consider and grant the extension.


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