51.2. Extension of the period for filing evidence

It is in the public interest that opposition proceedings are conducted as efficiently and predictably as possible. The Registrar expects the parties to file their evidence in the statutory periods allowed for that purpose. However the Registrar is aware that, despite the parties’ best endeavours, it may not always be possible to do so.  Accordingly the Registrar may extend the statutory period for filing evidence.  The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) limited the circumstances under which an extension of time may be granted.  Those circumstances are stated in regulations 5.15, 9.18, 17A.34K, 17A.48T.

Summary Guidance for Parties Filing Evidence

When planning for the filing of evidence it is important that parties are aware of the requirements for obtaining extensions of time. There are strict requirements for obtaining extensions of time for filing evidence. Absent exceptional circumstances, parties must show that they have made all reasonable efforts to comply with all filing requirements, and that they have acted promptly and diligently at all times to ensure the evidence is filed within the period. Detailed guidance is found below, however key points for parties to have in mind at an early stage (i.e. before the start of an evidence period) include:

• Reasonableness of conduct relates to conduct across the whole of the opposition, so it is useful to plan early, where possible, for the filing of evidence, including the consideration of appropriate declarants.​​​​​​​
• Important to obtaining an extension of time is an explanation of what was done, when it was done, how it was done and by whom.  A narrative along with a chronology of actions is typically very helpful.
• Acting reasonably at all times, along with being prompt and diligent, is not a standard of perfection.  What is required is a reasonable plan executed well, with no significant unexplained delays.  An explanation of the circumstances of the case is necessary for a delegate to determine whether a party has been sufficiently prompt and diligent.
• Where simple errors on the part of a party prevent evidence being filed on time, an extension may still be appropriate.

What is sufficient depends on the case, but in general there should be an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected difficulties that arose.  Providing a fulsome picture of the circumstances upfront will assist in reducing the time taken to resolve the extension. Where the information initially provided is insufficient to satisfy the delegate, an opportunity for the party to provide further information is likely to be provided, and the delegate will clearly outline specific information that could be provided by the party so as to satisfy the criteria. Any further information requested, or queries raised by the delegate should be directly addressed in responding.

2.1 Applying for an extension

Only the applicant or the opponent can apply for an extension although the application for the extension may be filed on their behalf by their legal representative.  

The application should include the following information:

• the name of the party applying for the extension
• the trade mark number
• the length of time required in months
• an explanation of why the extension is required

The application for an extension of time to file evidence must be filed with IP Australia. IP Australia will give a copy of the application to the other party.

The fee for filling the application must be paid at the time the application is filed (see Schedule 9 to the Regulations). The application may be taken not to have been filed unless the fee is paid (section 223(4)(b) and reg 21.21A).

• Part 4 Fees

It is highly desirable that the application be filed with IP Australia before the period in which to file evidence has expired.

2.2  Reasons for the extension for evidentiary periods

Under regulations 5.15, 9.18, 17A.34K, 17A.48T the period for filing evidence may be extended if the Registrar is satisfied that the party:

1. has made all reasonable efforts to comply with all of the relevant filing requirements; and

• despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so, or

2. there are exceptional circumstances that justify the extension (regs )

Reasonable efforts, prompt and diligent at all times
 

An extension is available if a party fails to meet the time period despite acting promptly and diligently at all times. It follows that the Registrar will not extend a time period because of delays caused by a failure to act diligently or promptly either by the party, their agent or legal representative, or an expert engaged by them.

A party is required to make “all reasonable efforts” to comply with relevant filing requirements, and to have acted “promptly and diligently at all times”. Consequently, a party making a request to the Registrar for an extension of time should be able to demonstrate a consistent overall pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe.

Acting reasonably and being prompt and diligent, is not a standard of perfection. However, the party seeking an extension must provide sufficient information for a delegate to decide that, on balance, the party’s plan for evidence preparation was reasonable, and that plan was executed promptly and diligently.

‘An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently.  The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.’ Tred Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy [2013] APO 57, [76]

The party will need to provide an explanation of why it was not possible to complete the evidence on time. This necessarily focuses attention on the actions that the party has taken throughout the preparation of their evidence, not on the actions that they intend taking if the extension is granted. For instance, an extension is not available merely "in order to allow a declaration to be signed by the declarant", because that does not explain why the evidence was not completed in time. Rather, in order to obtain an extension a party will need to explain why they were unable to have the declaration signed during the existing time period, despite acting promptly and diligently to ensure it was done in time.
 

What is sufficient will depend on the case, but in general there should be a reasonable plan for the preparation of evidence that is executed promptly and diligently with no significant unexplained delays. This requires an explanation of the overall strategy for preparing evidence, a description of what was done, and when it was done, and a discussion of any unexpected challenges that arose. When offering details of what was done and when, it is sufficient to focus on the major parts of the evidence preparation process. It is not necessary to provide a detailed timeline of every step taken. Where a simple error on the part of a party prevents evidence from being filed on time, an extension of time may still be appropriate provided the party can demonstrate they have acted reasonably, promptly, and diligently.

The following matters would suggest that a party had not made all reasonable efforts and acted promptly and diligently to comply with an evidentiary period:

• significant unexplained delays, e.g. in finalising the evidence of the appropriate person authorised to make a declaration on behalf of the applicant or opponent company.
• delays in obtaining expert evidence that could have been anticipated and acted on
• unavailability of relevant declarants due to involvement in other matters, unless the party had exhausted all efforts to find alternative declarants
• the extension is being sought to obtain evidence of matters not referred to (either directly or by clear implication) in the statement of grounds and particulars
• delays due to intervening holidays, leave, etc which were known or could have been expected
• the adoption of an inherently lengthy process of evidence preparation, such as that which may be required for survey evidence. The use of survey evidence is a matter of choice, and parties must ensure that no delay arises from this choice.

The nature and the significance of the evidence that is being prepared may be relevant to the reasonableness of the actions of the party.

Exceptional Circumstances
 

Exceptional circumstances include (but are not limited to): a circumstance beyond the control of a party; an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement; an order of a court or a direction by the Registrar that the opposition be stayed. Parties should not expect that time needed for the purpose of settlement negotiations will be considered under these provisions. Time needed for that purpose should be applied for under the appropriate suspension or cooling-off provisions.

The Registrar will decide the length of the extended period with regard to what is reasonable in the circumstances and may do so on terms that the Registrar considers appropriate.

2.3  Grant of the extension

When an application for an extension is filed at IP Australia, the Registrar will delegate an officer to decide whether there is a prima facie case for the grant of the extension.  The delegate needs to be satisfied the extension applicant has made out either of the grounds on which an extension may be granted and that there is sufficient reason to exercise the Registrar’s discretion and grant the extension.  If the delegate is so satisfied, both parties will be notified that the other party is being given an opportunity to make representations concerning the application.

If the delegate finds the extension applicant has not made out either of the extension grounds or that there is not sufficient reason to exercise the Registrar’s discretion,  both parties will be notified that the Registrar intends to refuse the extension. The extension applicant will be given an opportunity to provide further information in support of the grant of the extension or to ask to be heard about the intended refusal.

If the extension applicant does not respond to that notice the delegate will refuse the extension.  If it does respond by supplying further information which does satisfy the delegate, the other party will be given an opportunity to make representations concerning the application.

Representations concerning the application may be made in writing or at a hearing. If the delegate finds the other party’s written submissions have merit, the extension applicant will be given an opportunity to respond.  If the delegate finds the written submissions have no merit the extension will be granted and both parties provided with reasons for the delegate’s decision (reg 21.20).

This process means it may take some time before the delegate decides whether or not to grant the extension. If the extension is only for a month, the relevant date may have passed before the decision is made.  Even if the extension has not yet been granted the onus is on the person applying for the extension to file their evidence before the relevant date expires.

PLEASE NOTE: If the extension is granted but the relevant date has passed without the evidence having been filed, it is highly unlikely the extension applicant will be able to make out either of the grounds for the grant of a further extension. The time taken to decide the first extension is not an exceptional circumstance.

2.4  Refusal of the extension

The consequence of the extension being refused will depend on the stage and nature of the proceedings.

Opposition to registration or protection

• If the extension was for filing evidence in support, a date will be set for the other party to file its evidence in answer
• If the extension was for the filing of evidence in answer, a date will be set for the other party to file its evidence in reply unless no evidence in answer has been filed in which case the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.
• If the extension was for filing evidence in reply, the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.

Opposition to removal or cessation of protection

• If the extension was for filing evidence in support and some evidence was filed in the statutory period, a date will be set for the other party to file its evidence in answer unless no evidence in support has been filed in which case the application for removal or cessation of protection will proceed.
• If the extension was for filing evidence in answer and some evidence was filed in the statutory period, a date will be set for the other party to file its evidence in reply unless no evidence in answer has been filed in which case the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.
• If the extension was for filing evidence in reply, the period allowed for the parties to file their evidence concludes and the parties will have the opportunity to request a hearing.

2.5  Evidence filed out of time

The decision in a trade mark opposition is an administrative decision and it is not final.  The parties have the option of having the matter decided by a court.  Proceedings in court are more expensive to conduct than proceedings before the Registrar and are likely to take longer. However, that is not sufficient reason to deviate from the principle that an opposition proceeding before the Registrar should be conducted as efficiently and predictably as possible.  As a general rule evidence that is not filed in time is not considered by the delegate when deciding the opposition.

Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party.  The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account.  The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must both pay the relevant fee and make a compelling case in favour of it being considered.  The issues the filing party needs to address in its submissions include:

• Why the evidence was filed after the due date
• If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
• What the evidence shows
• Why that information is crucial to the delegate’s decision
• Why it is in the public interest to have the information considered
• What is the balance of convenience for the parties if the information is considered.​​​​​​​

Out of time evidence must be filed on Objective Connect together with the submissions in support of its consideration. The Registrar will advise the other party that the material has been filed and that no decision will be made until the evidence stage of the opposition has ended and one or both parties have asked to be heard.  At that time the delegate who is to hear the opposition will decide whether or not there is a compelling case for the information to be considered.

If the delegate is not satisfied that there is a compelling case, both parties will be advised that the matter will proceed to hearing and decision based on evidence that has been properly filed.  If the delegate is satisfied there is a compelling case, the other party will be given an opportunity to make representations in the matter before the delegate decides whether or not to consider the information.