As an IP attorney, one of the most common (yet misunderstood) queries I get from clients is, “Can we get more time?” Whether you’re managing a trade mark application, filing opposition documents, or preparing evidence, time often seems to slip through your fingers. Life happens. Deadlines loom. But thankfully, Australian trade mark law isn’t always inflexible. That’s where the Extension of Time provisions come into play, and trust me, they can be a lifesaver when used correctly.
What Is an Extension of Time Under the Trade Marks Act?
Under the Trade Marks Act 1995 (Cth) and its Regulations, there are numerous deadlines for doing certain acts, whether it’s responding to an examination report, filing evidence, or opposing a trade mark. Now, if you miss those deadlines or simply need more time, section 224 of the Act gives you a second chance, i.e. unless the specific act is “prescribed” and explicitly made non-extendible under Regulation 21.28.
In simple terms, If the act or document is not on the “prescribed” list, section 224 may let you request an extension.
Time for what acts can be Extended under section 224?
These are called “relevant acts” under subsection 224(8), and they include:
- Any act (other than a prescribed act) related to a trade mark
- Filing of any non-prescribed document
- Proceedings (excluding court proceedings)
One of the most common examples is requesting more time for acceptance of a trade mark application. Normally, you’re given 15 months from the date of the first examination report (under reg 4.12(1)). But if you’re not ready, you can request an extension of up to six more months. And if those six months are over or you forgot to ask before the deadline passed, you can still apply for more time under section 224.
Common Situations where extensions are requested?
Aside from the acceptance period, other “relevant acts” where section 224 comes to your rescue include-
- Filing a notice of opposition to an amendment (reg 6.6)
- Requesting costs in opposition proceedings (reg 21.12)
- Requesting an extension to a cooling-off period (reg 5.16)
- Registering a trade mark (reg 7.1)
- Responding to cancellation or assignment notices
- Filing opposition to amendment of registration (reg 8.4)
These are just a few. The provision is broad but not unlimited.
Time for what acts cannot be extended under section 224?
Not everything is extendible. Regulation 21.28 gives us a clear list of prescribed acts where time cannot be extended unless alternate provisions exist. These include-
- Failing to meet minimum filing requirements (reg 4.2)
- Missing the 6-month window for filing a convention application in Australia
- Failing to file divisional applications within set timeframes
- Delays in renewing registrations after the statutory period lapses
Some acts have alternate routes for extension, but others? No. When it’s non-extendible, it really means it.
Grounds on which such Extension may be granted
If you’re applying under section 224, you need to show why you deserve the extra time. You can base your application on one or more of the following-
Error or Omission
This could be a clerical error or a missed step, by you or your agent. But simply “forgetting” isn’t enough. You’ll need to demonstrate a genuine oversight that was reasonable under the circumstances.
Circumstances Beyond Control
Think force majeure. Floods, strikes, system failures, or global pandemics (yes, we’ve seen them all). If it was beyond your control, the Registrar has the discretion to be lenient.
Special Circumstances
These are case-specific. Examples include sickness, death, bankruptcy, pending litigation, or genuine difficulty in gathering evidence. In some cases, ongoing negotiations or waiting for a letter of consent may qualify.
Good thing to consider- Submitting a clear timeline, evidence of effort, and a genuine explanation can greatly increase your chances of approval.
How Much Time of extension can one get?
Extensions are generally granted in calendar month units, and there’s no hard cap, except that no extension can push the acceptance period beyond 21 months from the first examination report unless you’re applying under the general provision post that period. Also, while free extensions may be granted within the first 6-month buffer, anything beyond that usually requires a formal application with a declaration.
The Registrar’s Discretion
Even with all your documents in place, remember that the extension is not automatic. The Registrar will weigh the facts and may ask for additional declarations if your justification is thin. If you’re denied, you have the right to request a hearing under section 203, but it’s best to get it right the first time.
Final Thoughts
A missed deadline can cost your brand dearly and risk protection. But extensions of time under Australian trade mark law offer a second chance, i.e. if you know how to use them.
As an attorney, I always tell my clients that plan for deadlines but prepare for delays and if life throws you a curveball, don’t panic, know your rights, act swiftly, and always seek professional help when you need to buy more time.
Need assistance with your extension of time application? Let’s make sure your brand protection doesn’t skip a beat.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
