FOR IP PROFESSIONALS

Extension of time

There are general provisions under the Trade Marks Act 1995 which allow for extensions of time.

Extensions of time can also be requested to pay initial registration fees or renewal fees where the due date has passed.

Extensions of Time for Acceptance

After you file your application, The Trade Marks Act 1995 allows you 15 months from the date of the examiner's first report to meet any requirements identified by the examiner and to have your application accepted by the registrar. The final date for gaining acceptance is shown on the examiner's report. This is the date on which the application will lapse unless it has been accepted for registration.

If you need more time, you can request and pay for an extension of time.

From 15 to 21 months extensions will be granted if you pay the appropriate fee and your request is made before the date specified in the examiner's report.

If you make a late request or a request for an extension beyond 21 months, you must pay the appropriate fee and must make the request on specific grounds. You also have to provide a signed declaration supporting the grounds and setting out the reasons why you need further time.

If you are unable to overcome the objections raised in the examiner's report and your reasons for more time do not fall within the grounds of section 224, it might be possible to apply for a divisional application to allow the trade mark to proceed to acceptance for a limited sub-set of goods or services.

The original filing date is retained and the new application has a further 15 months until acceptance. The divisional application must be filed before the parent application lapses.

If your trade mark application is not accepted and it runs out of time, it will lapse.

Not all late requests or requests for extensions beyond 21 months are accepted and fees are not refundable.

Request for an Extension of Time between 15- 21 months

The Trade Marks Act 1995 allows an applicant 15 months from the date of the examiner's first report to gain acceptance of the application. If you wish to apply for an Extension of Time between 15 and 21 months you will need to complete an Application for Extension of Time (for Application of a Trade Mark between 15 and 21 months after the first report) [326KB]

If the final date to gain acceptance has not passed, you may respond to the examination report in writing to overcome the objections the examiner has raised which are preventing the application being accepted for registration. (If you do not have a copy of the examination report please contact us to arrange for re-issue).

If you require more time to address the examiner's objections of your file and you have less than 3 weeks left before the final date for acceptance, you must apply for an extension of time. The extension of time will allow the examiner further time to consider your response.

Extensions need to be requested in writing, be accompanied by the appropriate fee and must be received on or before the current due date for acceptance, otherwise your trade mark will lapse and you will need to apply for an extension of time under section 224.

Provided the extension application is made before the final date for acceptance, and the appropriate fee is paid, the Trade Marks Office must grant the extension.

Request for Extension of Time beyond 21 Months

After 21 months, an application for extension may only be made under the provisions of section 224. If you wish to apply for an Extension of Time just before the end of 21 months you will need to complete an Application for Extension of time under section 224 [561KB] with the appropriate fees for extension as well as a signed declaration setting out the grounds for needing an extension of time on or before the current due date for acceptance, otherwise your trade mark will lapse.

The Registrar has the discretion not to extend the time if they do not consider the reasons for the application for an extension of time to be sufficient. Fees are not refundable.

Request for an Extension of Time where the final date for acceptance has passed

Where the final date for acceptance has passed, an extension of time has not been filed on or before the due date for acceptance and the application has lapsed, you may apply to reinstate your application by requesting an Extension of Time under Section 224 of the Trade Mark Act 1995.

A late application for an extension of time must be accompanied by a signed declaration setting out the grounds for needing an extension of time together with the appropriate fee. Fees are calculated per month or part thereof from the acceptance due date.

Please note that the grant of any such extension cannot be assumed and extension fees are not refunded if the request is not granted.

Important note:

If your request is for more than three months, the extension will need to be advertised and may be opposed. This means the extension of time for a lapsed application must extend the acceptance due date at least until a time where the Registrar is able to examine the application. This date will always be after the end of the advertisement period.

Request for an Extension of Time to pay registration fees

If after acceptance the registration fee has not been paid on or before the due date, the trade mark application will become Lapsed-Accepted.

To apply to reinstate the application you must apply for an Extension of Time, under Section 224 of the Trade Mark Act 1995.

A late application for an extension of time must be accompanied by a signed declaration setting out the grounds for needing an extension of time together with the appropriate fee. Fees are calculated per month or part thereof from the acceptance due date.

Please note that the grant of any such extension cannot be assumed and extension fees are not refunded if the request is not granted.

Important note:

If your request is for more than three months, the extension must be advertised and may be opposed.

A declaration is required

In order to apply for an extension of time, your application must include one or more declarations, setting out the reasons why the fee was not paid or act not done by the required date. Declarations are written statements of fact, signed by an authorised person. Trade Marks Regulations 21.6 and 21.7 provides requirements on declarations required by the Trade Marks Act 1995 and Trade Marks Regulations 1995. You will need to complete a Trade Marks Declaration Form  [221KB].

What to include in your declaration

The declarations you supply with your request must:

  • give a full and frank disclosure of all the relevant circumstances.
  • describe the chain of events that led to the fee not being paid or act not being done in time; this may mean that you have to get declarations from a number of people who were involved and who have direct knowledge of the events.
  • explain the error or omission made, the circumstances beyond your control, or how, in spite of you taking due care, you missed the deadline.
  • explain any delays that happened between when you found out there was a problem and when you made the application for an extension of time.
  • include copies of any documents that support the explanations.

 

Last Updated: 12/4/2013

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