23.5. Extensions of time: Circumstances beyond the customer’s control

Section 137(2)(b) applies if circumstances beyond the customer’s control result in their not taking a relevant action.

When seeking an extension on this ground, the customer needs to satisfy the Registrar that the need for extra time was unavoidable – i.e. they could not have avoided it by exercising due care.

Examples of circumstances beyond a customer’s control are:

• post/courier delays
• sickness or accident
• waiting for a court decision
• wars and terrorism
• industrial action (strikes, lockouts)
• machinery breakdowns
• arson and vandalism
• forces of nature such as storms, earthquakes and floods.
  
  

Interpretation of ‘circumstances beyond control’

‘Circumstances beyond control’ is a force majeure provision – that is, it is outside the control of the person concerned and something that could not have been avoided by that person’s exercise of due care.

A customer cannot argue that an error or omission by their agent was beyond the customer’s control. Courts consider that errors or omissions made by an agent (or an agent’s employees) are also attributable to the customer. The word ‘employee’ here means a direct employee and not an intermediary, such as a courier or a postal authority.

If a customer who is prosecuting their own case becomes seriously ill and cannot reasonably be expected to attend to their affairs at the relevant time, the customer would likely be entitled to an extension.

This will not apply if, for example, a staff member of a firm representing a customer missed a time limit to complete a relevant act because of illness. In that case the firm should have made other arrangements to deal with the matter, and ‘circumstances beyond control’ is unlikely to be relevant.

Waiting for a court judgement on another matter that will directly affect the completion of a relevant act has been held to be a circumstance beyond a person’s control (Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham (1995) AIPC 91-144 at paras 104 and 105).

Examples of circumstances that are not considered beyond the customer’s control are:

• lack of funds (Vrubel v Upham (1996) 36 IPR 220)
• becoming bankrupt (Reilly v Commissioner of Patents (1996) 36 IPR 314 [49]). A sequestration order is the culmination of a sequence of events that the customer could have avoided if they had exercised due care.

There are cases where a customer makes a ‘circumstances beyond control’ argument (s 137(2)(b)) rather than an ‘error or omission’ argument (s 137(2)(a)) – even where the evidence clearly shows that they could get an extension because of error or omission – because the fees that apply under s 137(2)(b) are lower than those under s 137(2)(a), particularly if the extension is for a long period. In such cases we should not grant an extension based on circumstances beyond control. Instead, if the facts support an extension based on error or omission, we should invite the customer to submit an application on this basis.​​​​​​​

Precedent

The words ‘circumstances beyond the control of the person concerned’ have been interpreted in:
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• Board of Control of Michigan Technological University v Deputy Commissioner (High Court appeal) (1982) AIPC 90-005; and (Federal Court) (1981) 34 ALR 529
• Rohrmoster v Registrar of Trade Marks (1987) 7 IPR 551
• Abbott & Lamb Pty Ltd v Registrar of Trade Marks (1991) AIPC 90-806
• Jiejing Pty Ltd v Commissioner of Patents and Ron Thomas and Allan Garnham (1995) AIPC 91-144
• Solar Mesh Pty Ltd v Commissioner of Patents (1995) AIPC 91-138.

Criteria for granting extension

A finding that the customer has been affected by circumstances beyond their control is not in itself enough to require the grant of an extension of time. There must be a causal link between those circumstances and a relevant act that must be done within a certain time and, because of the circumstances, either is not done or cannot be done within that time. The causal link is indicated by the use of the word ‘because’ in s 137(2).
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Conditions of extension

• The application for extension must include at least one declaration. This can be a statutory declaration or a declaration under the Designs Act
• There is a flat fee
• If the application for extension is for more than 3 months, we need to advertise it for opposition purposes.