Tactical Use of Extensions in Australian Trade Mark Opposition Proceedings: Strategy and Risks

When a trade mark is opposed in Australia, the clock starts ticking. Trade mark oppositions are relatively fast-moving proceedings, with strict deadlines for filing oppositions, evidence and submissions. One may find themselves needing more time – for example to consider options, gather evidence or pursue settlement.

Requesting extensions of time during trade mark opposition proceedings may appear convenient, but caution is required. The rules have been tightened over the last decade in Australia, making extensions of time much harder to secure during these proceedings. Such requests are now scrutinised closely, and repeated requests risk being perceived as an abuse of process.

So, when is it appropriate to seek more time during trade mark opposition proceedings in Australia, and what are the risks?

Extensions of Time in Australian Trade Mark Opposition Proceedings: The Framework

Under the Trade Marks Regulations 1995 (Cth), parties can request extensions of time at key stages of a trade mark opposition including for filing evidence in support, answer, or reply. Note however that it is no longer possible to seek an extension of time to file the opposition (whether it involves filing the Notice of Intention to Oppose or the Statement of Grounds and Particulars) unless there has been an error or omission by the applicant, their attorney or the Registrar. As a result, if you are contemplating filing an opposition but the deadline to do so is nearing, it may simply be best to file the opposition to reserve your rights.

According to reg 9.18 of the Trade Marks Regulations 1995 (Cth) the Registrar may grant an extension of time for filing evidence in trade mark oppositions only if the party requesting the extension has made all reasonable efforts to comply with the deadline, but despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so, or if there are exceptional circumstances that justify the extension. Exceptional circumstances include:

• a circumstance beyond the control of a party;
• an error or omission by the Registrar or an employee;
• an order of a court or a direction by the Registrar that the opposition be stayed.

Time needed for the purpose of settlement negotiations will not be considered under these provisions, as time needed for that purpose should be applied for under the appropriate suspension or cooling-off provisions.

Instead, what is sufficient will depend on the case, but in general there should be a reasonable plan for the preparation of evidence that is executed promptly and diligently with no significant unexplained delays. This requires an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected challenges that arose. Parties face a real risk of refusal if their justification is not strong and well-documented.

For the party requesting more time, this means IP Australia may refuse to grant an Extension of Time for tactical reasons that do not fall within the regulations set out above. This may lead to real commercial impacts and could damage the party’s case.

Alternative strategy: Cooling-off Period

A cooling-off period may be requested at any time between after the trade mark opposition commences and before it has been decided or dismissed by the Registrar. Only one cooling-off period is allowed in an opposition proceeding. However, the catch is that both parties must sign off on the request for a cooling-off period – once they do, a 6-month cooling-off period must be granted by the Registrar. Both parties can subsequently request another 6-month extension of the cooling-off period before the end of the initial 6 months.

Either party may discontinue a cooling-off period early by requesting for the Registrar to do so. However, a cooling-off period can not be recommenced once discontinued.

Once the cooling-off period ends, the opposition resumes, and the relevant stage of the proceedings restart on the day after the cooling-off period ended. This means that, even if a cooling-off period was entered the day before a party’s evidence in support was due, that party will receive a new 3-month deadline to prepare and file its evidence in support. Cooling-off periods may therefore be used more tactically by parties requiring an extension – bearing in mind that the other party will need to agree to it.

Last resort: Suspension of Proceedings for Settlement Negotiations

Suspension of trade mark opposition proceedings is only available once the cooling-off provisions has been fully utilised, and only in certain circumstances. Similarly, both parties will need to make the request or at least provide written consent to it. The initial suspension prior is generally 6 months but may be one year in exceptional circumstances.

If the parties wish the suspension to continue beyond the initial expiry date, they should apply at least two weeks before the suspension is due to end.  If continuation of the suspension is not requested, the Registrar will reset the last deadline it issued in the trade mark opposition proceedings – similar to when the cooling-off period would end.

In order to obtain a suspension, the parties will generally need to satisfy the Registrar that settlement negotiations have progressed such that there is a real likelihood of settlement, which is determined on a case-by-case basis. However, suspension may also be requested for any other circumstances, including at the Registrar ‘s own discretion. Circumstances that would prompt a suspension for other reasons than settlement negotiations may include referral of an opposed non-use removal proceedings to court, a natural disaster or office closure.

Practical Guidance for Brand Owners

• Don’t rely on extensions of time. In Australia, requests for extensions of time should be viewed as a tool of last resort – they are difficult to secure, and there is a real risk of refusal of the request. Instead, request advice from your Trade Mark Attorney or Lawyer as soon as possible and work together to best utilise the time you have by starting preparations early and potentially considering requesting a cooling-off period instead, if the parties are negotiating settlement.
• Oppose strategically where needed. When in doubt whether to oppose and the deadline to file an opposition is near, speak to a qualified Trade Marks Attorney as soon as possible to discuss strategy. If you are unable to seek legal advice before the deadline to oppose, consider whether to simply file the opposition would help keep your options open.
• Be pragmatic. Opposition proceedings are often time and resource intensive. If settlement is commercially viable, pursuing it early may save time and money, and may also provide greater opportunities to extend trade mark opposition timeframes where needed.
• Document everything. If you do need to seek more time, maintaining detailed records of your efforts to date would assist to demonstrate “genuine efforts” to the Registrar, and may increase your chances of successfully obtaining an extension of time.

Key Takeaways

Extensions of time in trade mark opposition proceedings are not a safety net. As they are difficult to obtain in Australia, extensions of time should not be relied upon as part of a trade mark opposition strategy.

For brand owners, the best and safest approach is to treat opposition timelines as immovable. Plan early, gather evidence proactively, and explore settlement where appropriate. For practitioners, extensions should be sought only when strictly necessary – and only with a strong evidentiary basis.

In oppositions, time really is of the essence. Are you dealing with a trade mark opposition or considering commencing one and have questions? Contact MBIP’s trade mark team today for strategic, tailored and forward-thinking advice.