23.10. Extensions of time: Advertisement

The Designs Office must advertise an application for an extension period of more than 3 months (s 137(4) and reg 11.13(2)) unless the Registrar intends to refuse it (s 137(6)). This gives others a chance to oppose the extension (s 137(5) and reg 11.13(3)). The advertisement has to be placed in the Official Journal (reg 11.13(2)).

The Registrar takes the decision to advertise only after considering the request and being satisfied that there is justification for the extension. The standard for being satisfied is that there is at least ‘some evidence on which [the Registrar] could decide to grant the extension of time’ (see Kimberly-Clark Corp v Proctor & Gamble Co. (1992) AIPC 90-869). If we are not satisfied, we will usually ask the customer to file more evidence.

The Registrar can determine that the extension is not justified and refuse the request without advertising it (s 137(6)).

The requirement to advertise applies to the total extension for one set of circumstances under s 137(2)(a) (error or omission by the customer) or s 137(2)(b) (circumstances beyond control).

Example

A design owner needs an extension for completion of examination. They first apply for a period of 3 months, although the error (s 137(2)(a)) that caused the delay would have justified a longer extension. Finding that they need more time, they apply for a second extension based on the same error. This makes the total extension they have applied for exceed 3 months, so we need to advertise it.

Note that we need to advertise in this example not because the total extension for a single purpose (completion of examination) exceeds 3 months but because the total extension on the same specific grounds (the error) exceeds 3 months. We would not need to advertise if the second extension was based on grounds under s 137(2)(b) or even on different grounds under s 137 (2)(a).​​​​​​​

Opposition

A person (or persons) has 1 month from the date of the advertisement to file a notice of opposition (reg 11.13(3)). This must be filed in an approved form.

Notice of grant

If we then grant the advertised extension, we need to publish a notice of this grant in the Official Journal (reg 11.13(4)).