16.1. What are the time limits for acceptance of an application to register a trade mark?

​​​​​​​1.1  Initial period for acceptance - prescribed period

The legislation states that "an application lapses if it is not accepted within the prescribed period or within that period as extended in accordance with the regulations" (section 37). The prescribed period is 15 months from the date of the first report, or 15 months from the date of any further report that raises new grounds for rejection of the application. This is the basic time period within which an applicant for a trade mark is expected to finalise the application to the point of acceptance.

If an ex partehearing is requested on an exam matter and the initial 15 month period has expired or is due to expire, Office practice is for the applicant to continue applying for extensions of time to extend the acceptance date until the hearing date has been reached. After this, there is no further requirement for the applicant to continue extending the acceptance date while waiting for the decision to issue. For example, if the acceptance date is 1 March and the hearing is set down for 20 April, the applicant will be required to extend the acceptance date by two months.

1.2  "Easy" extension period - prescribed period as extended

It is possible to extend this period by making an application for an extension of time under subregulation 4.12(3). If this is done before the prescribed period expires (see paragraph 1.4) and during the first six months after the initial 15 months, it may be done simply by way of a written request, accompanied by the appropriate fee. This six months may be known as the “easy” extension period. During this time, the Registrar may grant free extensions under the provisions of subsection 224(1), due to the late issue of a further report in response to a letter from the applicant, or for whatever other reason. However, such free extensions will not extend the “easy” extension period past the end of 21 months from the date of issue of the first report on the application (or the date of issue of a further adverse report raising new grounds for rejecting the application under paragraph 4.12(1)(a) of the Regulations).

1.3  Period of extension under section 224

After 21 months, the application may only be extended under the provisions of section 224.  Except for extensions granted because of the Registrar’s error or omission, the particular provisions require, in addition to a written request in an approved form, (and the appropriate fee) a declaration setting out the facts upon which the grounds specified in the application for an extension of time are based (reg 21.25). This declaration will be considered by the Registrar, who has the discretion not to extend the time, if he or she does not consider the reasons for the application for an extension of time to be sufficient.

1.4  Late application for extensions of time

Subsection 224(4) provides that the date of acceptance for an application may be extended either before or after the time has expired.

Subsection 224(4) will apply to all late requests for extensions of time for acceptance, whether the application in question is within its "easy" extension period or not. Therefore, if an application for an extension of time is made after the time has expired, even if it is within its six month "easy" extension period, it will still have to be made under the provisions of subsection 224(4) and reg 21.25. These provide that a late application for an extension of time must be accompanied by a declaration setting out both the grounds for needing an extension of time, and also the reasons the application for the extension was not filed in time (together with the appropriate fee). This declaration will be assessed as described in paragraph 1.3.

Note:  Although any late application for an extension of time must be made under the provisions of section 224, any subsequent applications for extension of time within the six month “easy” extension period that are not late will not require a declaration, as the conditions for “easy” extensions may again be applied.

1.5  Opposition to extensions of time of more than three months

Applications for extensions of time of over three months made under the provisions of section 224, and assessed as valid by the Registrar, must still be advertised in the Official Journal.  Following the advertisement, time is allowed during which an opposition to the extension of time request may be filed.  The application may not be processed until this opposition period has passed (subsection 224(5)). However, extensions of more than three months applied for during the six months “easy” extension period may be actioned without being advertised (unless they have been applied for out of time, and therefore under the provisions of section 224).