15.1. When the general provision applies

When the Act and Regulations set a time in which to perform an act or file a document, that time can frequently be extended upon request.  In some cases the procedure for requesting an extension is set out in the legislation.  If it is not, a request for an extension can be made under the general provision for an extension of time in section 224 unless the act or document has been listed (prescribed) in reg.21.28 as one to which section 224 does not apply. 

Note:  Refer to paragraph 2 of this Part for detailed information about “prescribed acts” and extensions of time.

The acts to which section 224 does apply are known as “relevant acts” and are described in subsection 224(8) as being:

• any act (other than a prescribed act) done in relation to a trade mark; or
• the filing of any document (other than a prescribed document); or
• any proceedings (other than court proceedings).

The relevant act for which an extension of time under section 224 is most commonly required is the acceptance of a trade mark application for possible registration.  The period allowed for the application to be accepted is generally 15 months from the date of the first examination report (reg 4.12(1) but that period can be extended at the applicant’s request for a total of 6 months.

If the period has already been extended by 6 months and the applicant needs more time, they must apply for an extension of time under section 224 (see note 2 to reg 4.12).  The applicant also needs to resort to section 224 if fewer than 6 months have been allowed but it failed to ask for an extension before the acceptance date had passed (see note 1 to reg 4.12).

• Part 16 Time Limits for Acceptance of an Application for Registration

Some of the other more common relevant acts for which an extension of time under the general provision applies include:

• filing a notice of opposition to an amendment of a trade mark application which has been published for opposition (section 65A and reg 6.6).
• Part 9 Amendments and Changes of Address - 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
• filing an application for an award of costs, or a bill of costs in relation to opposition proceedings (reg 21.12)
• requesting an extension to a cooling-off period (reg 5.16)
• registration of a trade mark (reg 7.1)
• Part 39 Registration of a Trade Mark - 4. Timing for Registration
• claiming a right or interest in a trade mark to respond to a notification regarding cancellation of registration of the trade mark (section 84 and subregs 8.1(2) and (3)), assignment or transmission of the trade mark (section 111 and reg 10.5), or a request to cancel the recordal of the claimed interest (section 115 and subreg 11.3(4)).
• filing a notice of opposition to an amendment of a trade mark registration which has been published for opposition (section 83A and reg 8.4).

1.1

The general provision of subsection 224(1) requires the Registrar to grant additional time for doing a relevant act when the additional time is needed because of an error or omission on the part of a trade marks employee.

Section 204 provides for the Registrar to perform actions (which are not otherwise limited as to time) as soon as is practicable. The Trade Marks Office endeavours to reply within four weeks to an applicant's response to an examiner's report. If a reply is not provided in that time the examiner will acknowledge and apologise for the delay.

If the delay occurs when the application is within the prescribed 15 month period the examiner will indicate to the applicant that they may make a request close to the lapsing date for an extension of time equivalent to the delay. The Registrar may give consideration to such a request but note that approval of a free extension of time will not be the automatic result of any delay.

A delay in responding to an applicant’s submission may not always constitute error or omission requiring extension of time. Delays occurring early in the 15 month period are unlikely to have any impact on the applicant’s ability to finalise the application within the significant period of time that remains. In these cases, the examiner will make it clear that no extension of time will be made available at the end of the 15 month period.

The Registrar may grant free extensions of time within the initial six month extension period under the provisions of s224.  However, these free extensions of time will not extend the initial extension period past 21 months from the date of issue of the first report (or from 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). That is, once the 21 month date is reached, even if this happens because free extensions of time have been previously granted, the applicant must apply for any further extensions of time under the general provisions.

Note: The basic unit used for extending time is one calendar month. Therefore, if the Registrar decides to compensate for a delay of one week after the four weeks reply period allowed (see above), this would result in a free extension of one calendar month being given.