Material Girl – Misses Out on Extension of Time in Trade Mark Opposition Proceeding


In April 2013 significant changes were introduced to the trademark opposition process in Australia.  These changes included the introduction of a more rigorous test for granting extensions of time to file evidence in opposition proceedings.

The Trade Marks Office recently issued the first decision concerning the grant of an extension of time under the new test.  The substantive case relates to an opposition to an application for the removal of trade mark registration no 901355 MATERIAL GIRL on the grounds of non-use. However, this decision is likely to be applied broadly to all trade mark opposition cases.

In the decision, the Office refused to grant an extension of time to the owner of the MATERIAL GIRL trade mark to file its evidence in reply because it failed to show that it had acted promptly and diligently at all times during the relevant period or that exceptional circumstances existed to justify the granting of the extension.

The Hearing Officer held that public interest considerations, business circumstances (in this case a mid-opposition asset sale and annual leave by a relevant party) and the extent to which the evidence is relevant to the outcome of the opposition were not sufficient grounds for granting an extension of time under the new provisions.

The decision clearly shows that the Trade Marks Office intends to strictly apply the new provisions, and that extensions of time for filing evidence in opposition proceedings will not be granted other than in the most exceptional and limited of circumstances.

We therefore recommend, that where there is a deadline for filing evidence, every effort be made to finalise and file the evidence by the relevant deadline.

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