Extension of time
At some stage during an opposition you may need to apply for more time to prepare documents. Regulations for extensions are complex as each form of opposition is unique.
Extension of time to oppose registration of a trade mark
There is three months after acceptance to oppose registration. You can apply to extend this period if there are satisfactory grounds to do so. These grounds include:
- an error by us
- an error or omission by the person or by their agent
- circumstances beyond your control
- negotiations between the parties
- undertaking research
You can apply by completing the Application for Extension of Time form and paying the applicable fee.
Application for Extension of Time form [271 KB]
An application may include:
- when you learned the trade mark had been accepted
- what information you require before you can make a decision on whether to oppose or on what grounds of opposition would be appropriate
- what you have already done in the period since you became aware of acceptance of the trade mark
- what you intend doing in the extended period to obtain further information
Note: If the three month opposition period has already ended, the application may only be made using the first three grounds noted above.
Extension of time to oppose removal
There are three months after the non-use application is filed to oppose the application. You can apply to extend this period if you believe you have reasonable grounds to do so. The grounds for an extension are:
- an error by us
- an error or omission by the person or by their agent
- circumstances beyond the control of the person
- any other special circumstances justifying an extension
You can apply by completing the Application for Extension of Time form and paying the applicable fee.
Application for Extension of Time form [454 KB]
An application may include:
- when you learned of the removal application
- when you decided you were going to oppose it
- what prevented you from filing the notice in time
In exceptional circumstances and with justifiable reasons, you may be able to seek a late extension of time after the opposition period has finished.
Extension of time for serving evidence
Either party may apply to the registrar for an extension of these time limits. We consider it appropriate to allow up to nine months for the preparation of evidence in support and evidence in answer, provided the party can show it is making good progress gathering the evidence.
Evidence in reply is usually allowed up to six months as issues raised will be narrower. If parties are negotiating a settlement, extensions of up to 15 months may be granted.
Compelling reasons are needed for extensions beyond these periods.
What happens during the process of an extension
An officer will decide whether or not the application has sufficient grounds. If there are problems with the application, the applicant will be given the opportunity to fix them.
Common problems include:
- not paying the relevant fee
- filing before the advertisement of the pending registration/removal
- administrative errors
The other party is allowed to object to an extension and a hearing may be held to decide the matter (fees apply).
The difference between objecting to an extension and opposing it
Objecting and opposing do not mean the same thing under trade marks law. To object is to provide reasons why the extension should not be granted. There is no fee for objecting to an extension unless the person objecting wishes to be heard.
We only give the other party in proceedings (the trade mark applicant/opponent or the removal applicant/opponent) the opportunity to object. An opposition, on the other hand, is a formal process that is initiated by the filing of a notice of opposition (for a fee), followed by a period whereby both sides prepare and serve evidence that they consider makes out their case.
The process ends when a delegate of the Registrar of Trade Marks decides whether or not the opposition has succeeded. Any person may file a notice of opposition. The only extension of time that may be opposed (rather than objected to) is an application for an extension of time of more than three months.
Last Updated: 06/12/2012
