Extension of Time in Disputes

When it comes to filing and managing trade mark applications in Australia, time is everything. Missing a deadline can mean the difference between securing your rights and starting from scratch. Thankfully, the Trade Marks Act 1995 and accompanying Regulations offer several pathways to request more time, depending on the situation.

General Extension Provisions under Section 224

Most extension requests are made under section 224 of the Trade Marks Act 1995. This general provision applies when the law sets a time limit for doing something—like filing a document or completing a step in the registration process—and you need more time.

However, not all acts are covered by section 224. The Trade Marks Regulations set out a list of prescribed acts and prescribed documents (regulation 21.28) to which section 224 does not apply. If the act you’re trying to extend is on this list, you’ll need to rely on other extension provisions, if they exist at all.

So, the first step in any extension strategy is checking whether section 224 is even available.

What can be extended under section 224?

Section 224 applies to what are called “relevant acts.” These include-

• Any act done in relation to a trade mark (as long as it’s not a prescribed act),
• The filing of any non-prescribed document, and
• Any proceedings (excluding court proceedings).

Now, here are some of the most common scenarios where applicants request an extension under section 224-

• Extending the 15-month period to gain acceptance of a trade mark (up to 6 months, and longer in certain cases),
• Filing a notice of opposition to an amendment published for opposition,
• Submitting an application for registration once the trade mark is accepted,
• Applying for costs or a bill of costs in opposition proceedings,
• Extending the cooling-off period,
• Responding to notifications about cancellation or assignment of a trade mark, and
• Filing opposition to registration amendments.

In most of these cases, the extension can be granted whether the time period has already expired or is about to expire, as long as you act promptly and provide adequate reasons.

When doesn’t the general provision apply?

Now, here’s where things get tricky. Certain timeframes are considered not extendible under section 224, either because they have alternative extension provisions or none at all. These include-

• Meeting minimum filing requirements (reg 4.2),
• Claiming convention priority within two working days of the initial filing,
• Filing a divisional application for excluded goods/services,
• Amending an application before publication (reg 6.2),
• Renewing a registration after the deadline,
• Opposing an extension of time over three months,
• Taking steps under customs or competition law actions, and
• Various procedures related to the Assisted Filing Service or trade mark attorney registration.

In short, some deadlines are fixed in stone. Others give you a small window for an extension, but you have to know which is which.

Grounds for Extension

If your act is eligible under section 224, you still need to provide good grounds. The law recognizes three key justifications-

Error or omission by the applicant or their agent- This is the most common ground, but it’s not a free pass. Forgetting to file a document is rarely enough. You’ll need to show that the delay was caused by a genuine, perhaps even understandable, oversight. A clear timeline and explanation in your declaration will go a long way here.

Circumstances beyond control (e.g., natural disasters, serious illness)- This is the legal version of a “force majeure” clause. Think about strikes, floods, system outages, or political instability, i.e., events no one could reasonably prepare for. Again, you’ll need to detail the event and how it directly impacted your ability to act.

Special circumstances justifying the delay- This is a flexible catch-all provision. Pending legal actions, difficulty collecting evidence, serious illness, or even complex negotiations might justify an extension. You’ll still need to show that you’re actively working to move the application forward.

What happens if the delay is due to IP Australia?

Interestingly, if the delay was caused by an error or omission by a Trade Marks Office employee, the Registrar must grant an extension under section 224(1).There’s no discretion here.

Examples include-

• Failing to issue a notice or act on a request,
• Taking too long to respond to submissions, or
• Overlooking something in the application process.

If the Registrar caused the delay and it affects your ability to meet a deadline, you’re entitled to more time.

Extensions spanning over three months

If you need more than three months, things change. Under subsections 224(5) and (6), extensions longer than three months must be:

• Published for opposition, and
• Subject to potential objection from other parties.

This process involves-

• Submitting a signed declaration,
• Paying the required fee,
• Waiting around two months for the publication, opposition period, and follow-up.

If an opposition is filed, the Registrar decides based on both parties’ submissions and evidence. If not, the application is assessed on its merits.

The Application Process

All that said, in order to apply for an extension, you must file-

• The approved form (including the trade mark number, contact details, and the period sought),
• A declaration supporting your grounds (as per reg 21.6),
• The relevant fee.

If the application is late, your declaration should also explain why. And if your justification is lacking, IP Australia may ask for more detail. You’ll typically get 14 days to respond.

Our role as your IP advisors

Dealing with time limits in trade mark law is more than just marking dates on a calendar. Each extension carries strategic implications, especially if other parties are watching your application or planning to oppose.

At our firm, we take a proactive approach-

• Tracking key deadlines and alerting you ahead of time,
• Preparing detailed and compliant extension applications,
• Supporting your declaration with clear timelines and justifications,
• Advising when it’s better to seek a division, deferment, or evidence of use instead.

If your matter involves multiple jurisdictions or complex legal timelines, we’ll also help align your Australian filings with your global IP strategy.

So, time extensions can be a lifeline, but they’re not automatic. Knowing when they apply, how to apply, and how to justify them can make all the difference. And with IP Australia enforcing strict rules, it’s worth getting expert help early on.

If you’re worried about a looming deadline, or just want to stay ahead of your timeframes, we’re here to guide you through every step. From identifying the right extension pathway to preparing your case, we make sure the clock works in your favor.