Time for filing a notice of opposition

The Hearings Office will adopt the following practice in relation to the time for filing a notice of opposition to the registration of a trade mark in light of the recent High Court decision in The Muir Electrical Company Pty Limited v The Good Guys Group Limited 18/12/09, Lang J, HC Auckland CIV-2009-404-4965.

Time for filing a notice of opposition

The regulation states:
 

75 Time for filing notice of opposition

(1) A party who opposes an application for registration of a trade mark must file a notice of opposition with the Commissioner within 3 months after the date when acceptance of registration was first advertised.

(2) The Commissioner may, if requested, extend the deadline for filing a notice of opposition—

• (a) by up to 1 month, without the applicant's consent; and
• (b) by up to 2 months, with the applicant's consent.
  
  

(3) The Commissioner must not extend the deadline after the deadline has expired.

In the High Court decision referred to above the Court noted that an extension of time for filing a notice of opposition made pursuant to regulation 75(2)(a) or 75(2)(b) must be received (including the consent when required) and granted by the Office before the expiry of the deadline.

The Judge comments in the decision that there is no power for the Commissioner to grant an extension of time under regulation 75(3) after the expiry of the deadline – even where the extension of time application was received by the Commissioner prior to the deadline.

The Hearings Office will endeavour to consider and process an extension of time for filing a notice of opposition within 5 working days. To assist with the processing of the extension, we have created a separate document type in the online correspondence system called Hearings Office extension of time. This will mean the request will go through the IPONZ system directly to the Hearings Office allowing the maximum time to consider and process the request. You are encouraged to use this service in order to give the Hearings Office sufficient time to consider and, where appropriate, grant the extension of time on or before the deadline.

The Hearings Office will take all reasonable steps to ensure that extension of time applications that are received less than 5 working days prior to the deadline are considered and determined prior to the expiry of the deadline. However, no guarantee can be provided that such applications will be able to be processed in time – especially in cases where applications are received on the final day before expiry of the deadline.

Comments on this practice are welcome. Please send comments to hearings@iponz.govt.nz