Trade mark proceedings: extensions of time

There has been a significant change in the practice of the Intellectual Property Office of New Zealand (“IPONZ”) in granting extensions of time in trade mark proceedings.

Background

Up until December 2009, IPONZ usually granted extensions of time (to file evidence, for example) as long as the application the was filed on or before the applicable deadline. Occasionally, if an application was made after the applicable deadline, IPONZ would still grant the extension provided there were genuine and exceptional circumstances. In December, however, his Honour Justice Lang held in Muir Electrical Company Pty Ltd v The Good Guys Group Ltd ("Muir") that the Trade Mark Regulations 2003 did not permit the granting of general extensions of time if they were applied for after the applicable deadline (ie retrospectively).

Muir

Muir concerned an application by the Good Guys Group to revoke a number of trade marks owned by Muir Electrical for non-use. During the revocation process, the Good Guys Group accidentally failed to notify IPONZ that it did not intend to file evidence in support of its revocation action. Having realised its error after the deadline for doing so has passed, the Good Guys Group applied for a retrospective extension of time to provide the notification. The Assistant Commissioner granted the retrospective extension using the broad discretion conferred by Regulation 32 of the Regulations. Muir Electrical appealed to the High Court.

(a) Issues

There were two issues in the case:

1. Whether the Commissioner had the power to grant extensions of time retrospectively; and
2. If 'yes', whether the circumstances in this particular case qualified as 'genuine and exceptional circumstances' under Regulation 32.

(b) Decision

In his decision delivered on 18 December 2009, his Honour Justice Lang held that:

• The Commissioner has no power to grant extensions retrospectively;
• Extensions for filing Notices of Opposition need to be applied for and granted before the applicable deadline expires; and
• "Genuine and exceptional circumstances" means that the circumstances giving rise to the need for the extension must be authentic and "quite out of the ordinary".

Summary

Before this decision, the Commissioner had granted several retrospective extensions of time under the Regulations on the basis that, if the Regulations did not expressly forbid doing so, the Regulations impliedly granted the power to do so. Following Muir, there is no power at all to grant extensions retrospectively and the applicable deadline must be adhered to. It is likely that the practice at IPONZ regarding trade mark extensions will now change as a consequence of Muir.

The moral of the story is - keep an eye on your diary!"

By Ian Finch, Partner, and Ben Cain, Trainee Solicitor

This article was also published in NZ Lawyer, issue 136, 14 May 2010, and an edited version published in Australian Intellectual Property Law Bulletin 2010. Vol. 23 No 1.

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Illicit Use or Fair Trading?
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