Interpretation of the ‘prompt and diligent’ ground for extensions of time in trade marks oppositions

The Trade Marks Office’s interpretation of the ‘prompt and diligent’ grounds for extension of time (EOT) for filing evidence in opposition proceedings has been broadened.

Regulations 5.15(2)(a), 9.18(2)(a), 17A.34K(2)(a) and 17A.48T(2)(a) of the Trade Marks Regulations 1995 (Cth) provide a basis for EOT to a party who can show that despite making all reasonable efforts to comply with the evidence filing date, and despite acting promptly and diligently, they have been unable to meet the deadline. The office has historically interpreted these provisions very strictly.

This change in interpretation is to recognise that while the provision is strict and requires parties to demonstrate reasonableness, promptness, and diligence, it doesn't impose a standard of perfection and permits remedy in certain situations that occasionally arise in preparing evidence. What's required of parties is that they can demonstrate a reasonable plan was executed well, with no significant unexplained delays. Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.

We expect this to significantly lower the evidentiary burden on parties seeking an EOT, and to permit EOT in certain situations that may not have been granted in the past. This would include:

  • Mere slips
  • Errors in recording follow up dates
  • Missing pages
  • Unsigned declarations
  • Technical errors encountered when submitting evidence
  • Other genuine errors that are causative of a failure to file when they are in the context of a reasonable plan for the preparation of evidence otherwise executed promptly and diligently.

As always, a party must seek an EOT as soon as practicable after discovering the error.

For detailed guidance see the Trade Marks Manual of Practice and Procedure (Manual). 

Trade Marks Manual

Why has this changed?

The enactment of Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (Cth) significantly narrowed the circumstances under which the Registrar of Trade Marks may grant an EOT to file evidence. While these amendments served their intended purpose in mitigating protracted opposition proceedings, practice surrounding EOTs for filing evidence has subsequently made it considerably more difficult to acquire an EOT for filing evidence late, even in cases of genuine error.

Following consultation with stakeholders and a comparison of Patents Office practice in respect of similar provisions, the Trade Marks Office has decided to issue this practice note and update the Manual accordingly.

When does this change have effect?

The interpretation has effect from 31 July 2023.