4.16 Extension of Time to File Notice of Opposition to Protection

Date Published

4.16.1  Relevant Legislation

Madrid Protocol Regulations

Rule 16  Possibility of Notification of a Provisional Refusal Based on an Opposition Under Article 5(2)(c) of the Protocol

(Time Limit for Notifying Provisional Refusal Based on an Opposition)


Trade Mark Regulations

​​​​​​​Reg 17A.34C Extension of time for filing - application

Reg 17A.34D Extension of time for filing - grant


Trade Marks Office Manual of Practice and Procedure

Part 47 Procedures for Opposing Registration or Protection


4.16.2  General Description

It is possible to extend the period allowed for filing a notice of intention to oppose or a statement of grounds and particulars.

When dealing with an application for an extension of time to file Notice of Opposition it is important to remember that IP Australia must notify the IB of any opposition within:

  • four months of the advertisement of acceptance in the Australian Official Journal of Trade Marks, or

  • seven months of the advertisement of acceptance in the Australian Official Journal of Trade Marks where an extension of time for filing Notice of Opposition has been granted.

If the application for the extension of time has been made within the statutory opposition period, it will be granted if the Registrar is satisfied the ground relied upon has been made out.  The holder will not be given the opportunity to object to the application for extension of time. The holder will however be notified that an extension of time has been granted.

Process

  • The grounds for requesting an extension of time must be checked to ensure they are allowable grounds in terms of subreg 17 34C(4).  

  • If the extension application has been made in time and the ground(s) have been made out, the extension is granted and recorded in RIO following existing procedures.

  • The extension of time applicant and the holder are notified that the extension has been granted.