4. Application for extension of time to oppose the non-use application where the trade mark is already removed

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It is important to note the provisions contained in section 98. These allow that if a trade mark has been removed from the Register, and an extension of time is granted to oppose removal then, providing a notice of opposition (that is, a notice of intention to oppose followed by a statement of grounds and particulars) is filed within the extended period, the trade mark must be restored to the Register. It is then taken never to have been removed.

Restoration of this kind may have drastic consequences for the removal applicant who, having succeeded in removing an allegedly unused trade mark from the Register, has gone ahead with its own plans on the understanding that the trade mark will remain removed. The extent of the resulting inconvenience is likely to be in direct proportion to the time elapsed since removal.

On the other hand, the removal of the registration may have very serious consequences for the trade mark owner and, as an unopposed removal has not been subjected to strenuous inquiry, the trade mark owner may have good reason to wish to oppose the non-use application.

When a late application is filed to extend the time for opposing a non-use application, the general position as set down in Vangedal-Nielsen v Commissioner of Patents, (1980) 33 ALR 144, will apply. The applicant for the extension (the prospective opponent to the removal) will need to establish that a serious opposition is foreshadowed. This party will also need to explain why the opposition could not have been filed within the time allowed and why, having regard to this and to the balance of convenience between the parties, the extension should be granted. It is desirable practice under these circumstances for the complete notice of opposition (that is, a notice of intention to oppose together with a statement of grounds and particulars) to be filed at the same time as the application for extension.

The longer the mark is off the Register, the more likely it is that restoration will seriously inconvenience the non-use applicant. Consequently, while an application for a late extension of time on certain grounds may succeed in the first week after removal, the onus increases sharply with the passage of time.

Delays in dealing with section 98 restoration applications should, as far as possible, be avoided.

PLEASE NOTE: Prior to 15 April 2013, the opposition process was initiated by filing a single document called a notice of opposition and the appropriate fee.

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