15.4. Grounds on which the Registrar may grant an extension of time

Section 224 provides three grounds on which an application for an extension of time may be made. The grounds apply to applications made before or after the time for the doing of the relevant act has expired (section 224(4)). The ground(s) on which the application is being made should be indicated in the application, with the facts on which the ground/s are based set out in an accompanying declaration (reg. 21.25).

The grounds are:

• error or omission by the person concerned or by his or her agent;

• circumstances beyond the control of the person concerned; and

• special circumstances exist to justify the extension.

4.1  Error or omission by the person concerned or by his or her agent

The grant of an extension of time on these grounds is discretionary and will depend on the circumstances of the case. Under the 1955 Act, the special circumstances provision of reg. 69 has been interpreted to encompass error or omission by the applicant or agent. The case law attaching to this provision may provide some guidance on what constitutes error or omission on the part of the applicant or agent - see Genentech Inc. v Wellcome Foundation Ltd (1988) 11 IPR 401 (Comm), applied in D'Urban Inc v. Canpio Pty Ltd (1990) AIPC 90-658 (Reg).

Acceptance by the Registrar of a particular instance being classified as an error or omission by the applicant or agent will depend upon the individual circumstances and background of the case. Any submissions regarding an extension sought on this ground would need to satisfy the Registrar that the need for the extra time was caused by a genuine error or omission on the part of the person concerned, or his or her agent. Given the impact that the extension sought might have on other parties, the Registrar would be unlikely to grant the extension because someone merely "forgot" to carry out an action.

4.2  Circumstances beyond the control of the person concerned

This is a force majeure provision and the grant of an extension of time on these grounds is discretionary.

4.2.1

This provision is equivalent to paragraph 131(1)(a) of the 1955 Act.  The scope of that provision was considered in Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 7 IPR 551 at 558 (FC), the case providing guidance on interpretation of "circumstances beyond the control of the person concerned".

4.2.2

The situations encompassed by this provision would cover circumstances which neither the person nor his or her agent could prevent, including occurrences such as the following:

• wars and terrorism,

• industrial action (strikes, lockouts),

• machinery breakdowns,

• arson and vandalism, and

• the forces of nature such as storms, earthquakes and floods

4.3  Special circumstances exist to justify the extension

The grant of an extension of time on these grounds is discretionary and will depend on the circumstances of the case.

The particulars of each extension of time application will determine whether special circumstances exist that justify the extension of time. Examples of factors that could amount to "special circumstances" include:

• pending non-use actions

• pending hearings

• sickness

• death

• bankruptcy

• particular difficulty in finalising the collection of evidence

• particular difficulty in finalising negotiations.

The provision of timetables setting down estimated completion dates will generally be of assistance. If the applicant can show that real endeavours to finalise the application are being made, this may also be of assistance. This could include the lodgement of:

• evidence of use

• a letter of consent

• advice or request relating to amendment of a statement of goods/services.

However, it is extremely unlikely that the Registrar would consider the extension of time application favourably if the applicant relied on the same set of circumstances as those used to support an earlier extension of time application.

If the Registrar does not consider that the extension of time is adequately supported and justified, the applicant may be invited to provide such extra information (in declaratory form) as may satisfy the Registrar that allowance of the extension of time is justified. In such cases, the applicant will be given 14 days in which to provide more information.

The applicant may, in accordance with section 203 of the Act, apply to be heard on the matter of an extension of time application.