How to Apply for a Time Extension in Opposition Proceedings
George Raptis
Given all the different deadlines involved in opposition proceedings, it is easy to forgo certain steps in the proceedings. Whilst missing a deadline can be fatal to your opposition, there is a chance that you can apply for a time extension with IP Australia during any stage of the opposition proceedings. This article outlines the steps to applying for a time extension during opposition proceedings with IP Australia.
1. Acceptable Reasons for an Extension
Importantly, you must have an acceptable reason to apply for a time extension during opposition proceedings. Given IP Australia will not always accept your application for an extension, you must support your application with good reason. Under the Trade Marks Act, the two reasons for granting a time extension for failure to meet a deadline are where there has been a:
- genuine error or omission by you or your agent (likely, a lawyer acting on your behalf); or
- circumstances beyond your control.
You must specify which of these reasons you are relying upon in your application for a time extension by ticking the relevant box and filing the application with IP Australia.
You should note that a genuine error or omission on your behalf must be unintentional. If you carelessly forgot to submit your application or chose not to carry out the submission, IP Australia would not consider this as a genuine error or omission. Additionally, any unavoidable circumstances, such as a family emergency or a natural disaster, would fall under circumstances beyond your control. In both circumstances, you must ensure that you have made all reasonable efforts to comply with the relevant filing requirements but were unable to do so for the reasons listed above. This will increase the likelihood of IP Australia accepting your application.
2. Provide a Declaration
In your application, you must also attach a declaration. Put simply, a declaration is a comprehensive written statement of fact that explains in great detail why you could not meet a certain deadline. In your declaration, you must:
- fully disclose all the relevant circumstances that prevented you from meeting the deadline;
- detail the events that led to you not being able to meet the deadline; and
- explain the error or the circumstances beyond your control that caused you to miss the deadline.
Moreover, you can support your declaration with further documentation to support the claims you have made. Indeed, to ensure that you do not miss important details in your declaration, you can fill in this standard form provided by IP Australia.
3. Pay the Relevant Fee
You must also pay the relevant dee when making an application for a time extension. The fee differs depending on your circumstances and in which part of the opposition process you are applying for an extension.
Generally, an extension due to an error or omission will cost $100/month for which the extension is being sought. For example, if you require a four-month extension to submit evidence in support of your opposition, you must pay $400 to the Registrar.
On the other hand, a request for an extension of time due to unavoidable circumstances will cost a flat fee of $100. A more comprehensive breakdown of IP Australia’s cost can be found online.
4. Outcomes
Unfortunately, no applications for time extensions are automatically granted. Instead, they are subject to IP Australia’s approval. IP Australia can reject your application for a time extension on the basis that they are not satisfied with your declaration. Alternatively, they may believe that you did not do all you reasonably could to meet the submission deadline.
If IP Australia accepts your time extension application, you can also be vulnerable to further opposition from the other party. The other party can oppose your accepted time extension application if it is greater than three months long. A disputed extension request can sometimes lead to an additional hearing that deals with the extension request alone. Unfortunately, this can prolong opposition proceedings altogether.
Key Takeaways
Before applying for a time extension, you must have a valid reason before IP Australia will grant an extension. Under the Trade Marks Act, the two acceptable reasons are that:
- there was a genuine error or omission on your behalf: or
- an unavoidable circumstance that meant you could not meet the prescribed deadline.
Accordingly, you must file an application for a time extension and attach a declaration that comprehensively details your circumstances. You must also pay the relevant fee for the application. For further help with applying for a time extension during opposition proceedings, contact our experienced IP lawyers on 1300 657 423.
Frequently Asked Questions
If you want to apply for a time extension to oppose a newly accepted trade mark, you must file your application for the extension before IP Australia enters the trade mark on the Registry. You must also specify in your declaration why you were not able to meet the deadline to file an opposition.
Since your declaration relates to the opposition proceedings in question, IP Australia will make your declaration available to the other party.