The burden on parties seeking an extension of time to file evidence in trade mark oppositions has been lowered effective 31 July 2023 following an Official Notice issued by IP Australia.
The Trade Marks Regulations provide a basis for extensions of time where a party can show that despite making all reasonable efforts to comply with the evidence deadline, and despite acting promptly and diligently, they have been unable to meet the deadline. However, the Trade Marks Office has historically interpreted these provisions very strictly.
IP Australia’s Official Notice states that the interpretation of the ‘prompt and diligent’ grounds for extension of time has been broadened. What is now required is demonstrating that a reasonable plan was executed well, with no significant unexplained delays. Where simple errors prevent evidence being filed on time, an extension may be appropriate. Some examples are provided of situations where extensions of time may be permitted and include errors in recording follow up dates, unsigned declarations, missing pages and technical errors encountered when submitting evidence.
The Trade Marks Manual of Practice and Procedure has also been updated.
Whilst the main change appears to be how extension requests will be dealt with when simple errors occur, it will be worth keeping an eye on how broadly the Trade Marks Office applies this change to practice.
