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ARTICLE · 15 DECEMBER 2014

Trade Marks Office issues first decision under new rules on extensions of time

The decision indicates that it will be very difficult to obtain extensions of time in trademark opposition proceedings.

AustraliaIntellectual Property

Changes to the regulations governing extensions of time in trademark opposition proceedings in Australia came into effect on April 15 2013 as a consequence of the Raising the Bar legislation. The Australian Trademarks Office has now issued its first decision (MG Icon LLC v Caprice Australia Pty Ltd) on whether to grant an extension under those provisions. The decision indicates that it will now be very difficult to obtain any extensions of time.

The new regulations provide as follows:

"The registrar may extend the period only if the registrar is satisfied that:
  1. The party:
    1. has made all reasonable efforts to comply with all the filing requirements and
    2. despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so or

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