IP Australia has recently announced changes to the standards for obtaining an extension of time for filing evidence of use in opposition matters and removal proceedings. Here’s a quick look at what the change is and how it might affect you.
The relevant provisions under the Trade Mark Regulations 1995 stipulate that extension can be granted if the Registrar is satisfied that the party:
1. has made all reasonable efforts to comply with all of the relevant filing requirements; and
- despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so, or
Previously these provisions were interpreted very strictly, imposing a standard of near perfection on the party seeking extension. IP Australia has now softened their interpretation of these terms “Reasonable efforts, prompt and diligent at all times”, to mean that a reasonable plan to file the evidence on time was in place, and there are no significant unexplained delays.
How it affects practice
In accordance with the guidance issued by IP Australia, it may now be possible to obtain and extension of time on the basis of mere slips; technical errors; missing pages; unsigned declarations; errors in recording follow-up dates; or any reason of a similar kind. If applying for an extension on any such bases, it is recommended that the declaration includes a clear chronology of events and explanation of what was done, when it was done, how it was done and by whom. The focus should be on demonstrating that a reasonable plan to file the evidence on time was in place.
Another recommendation is to ensure all significant steps taken in evidence preparation are recorded and traceable by date (e.g. date of email to client; date of document creation). Ideally, any lengthy unexplained delays will be avoided.
This change in practice may not be all good news. It is worth noting that many new applications could now be delayed for even longer on their journey to acceptance if they are awaiting finalisation of an earlier mark subject of opposition or removal proceedings.
More information can be found at the following resources:
- IP Australia Official Notice: Interpretation Of The ‘Prompt And Diligent’ Ground For Extensions Of Time In Trade Marks Oppositions | IP Australia
- IP Australia Trade Marks Manual of Practice and Procedure: 51.2. Extension of the period for filing evidence | IPA Manuals (ipaustralia.gov.au)