IPONZ change of practice for extensions of time to prosecute trade marks

In IP, New Zealand, trade mark on May 11, 2010 at 2:38 pm

The New Zealand Trade Marks Act 2002 provides a period of 12 months from the filing of the application to have it in order for acceptance. If the application is not in order for acceptance, or an extension of time has not been allowed, then the application is deemed abandoned. Once an application is marked off as abandoned it cannot be restored.

Therefore, it is critically important that any deadline set by the Commissioner is met.

The Trade Marks Regulations 2003 provides for extensions of time. The Commissioner has allowed extensions of time under Regulation 32 which requires there to be “genuine and exceptional circumstances” for the extension.

The Commissioner accepts that every extension is “genuine” however, a recent High Court decision has put doubt on what is meant by “exceptional circumstances”. Following the issue of the High Court decision, the Commissioner has required fairly detailed and different reasons for each subsequent extension. In the High Court, Lang J., considered that “exceptional” meant “quite out of the ordinary” and seemed to apply an objective rather than subjective test. In particular, His Honour found that “oversight is a common cause of deadlines being missed”. In this case, counsel had drafted the necessary correspondence to meet the deadline but for some reason that letter was not sent to IPONZ. I would have thought that subjectively the failure to mail a letter that had been finalised is out of the ordinary.

However, this looks set to all change following the Maestro decision of the Commissioner of Trade Marks. In that case, the Commissioner determined that extensions of the time to prosecute an application should be granted under Regulation 62 and not Regulation 32.

Regulation 62 provides that “The Commissioner may allow an extension, in the Commissioner’s discretion, and may allow subsequent extensions”. Thus, the Commissioner will have a wide and unfettered discretion to consider and grant extensions without being hampered by the requirement in Regulation 32 that there be “exceptional circumstances” for the extension.

The Hearings Office has indicated that there is a further decision on this issue that should be published in the near future that will provide more guidance on the issue.

This change is welcome, particularly for those occasional cases they take a long time to resolve notwithstanding diligence by the applicant.


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