Extensions of Time in New Zealand

After filing, if the Intellectual Property Office of New Zealand (IPONZ) raises any objections, you will be issued a Compliance Report. This report sets a 12-month deadline for you to resolve all the issues.

Twelve months can seem like a long time, but resolving complex legal objections, such as a conflict with another mark or a query about distinctiveness can be a slow and difficult process. You may need to negotiate with the other mark’s owner, gather extensive evidence of your mark’s use, or seek legal advice on a complex point of law.

What happens if that 12-month deadline is approaching and you are not ready?

This is where a formal Request for an Extension of Time becomes a critical, strategic tool. Under Regulation 62 of the Trade Marks Regulations 2003, the Commissioner has the discretion to grant one or more extensions, but only if you can provide a persuasive and well-documented reason. The onus is entirely on the applicant to justify the request.

How to File a Successful Request?

Filing a request for an extension of time is a formal legal process. It is not an automatic right, and the Commissioner will assess every request on its own merits.

The most important rule is that the request must be filed in writing before the current deadline expires. A request filed even one day late will be declined, and your application will be treated as abandoned.

When we file a request on your behalf, we ensure it contains clear and precise details justifying the need for more time. As the process continues and more time is granted, the reasons we provide must become “more detailed and persuasive,” and we may need to include supporting documentation to prove we are actively working to resolve the issues.

What Justifies an Extension?

IPONZ will not grant endless extensions or allow an application to remain at the examination stage indefinitely. The Commissioner must be satisfied that you are making a good-faith effort to finalize the application.

Based on the official guidelines, our firm can successfully request extensions based on several common and persuasive reasons-

• Seeking Consent or Negotiating Co-existence: This is one of the most common reasons. If your mark is blocked by a prior mark (a “citation”), the best solution is often to get the other owner’s written consent. We can state that we are actively in negotiations for a letter of consent or a co-existence agreement. For subsequent requests on this basis, we will provide supporting documentation, such as copies of our correspondence with the other party, to prove that active negotiations are underway.
• Preparing Evidence of Use: If your mark was objected to for being non-distinctive or descriptive (a Section 18 objection), the primary way to overcome this is by proving “acquired distinctiveness.” This requires gathering extensive evidence of your mark’s use, including sales figures, advertising spend, and statutory declarations. We can request an extension on the grounds that we are actively preparing this complex evidence submission.
• Addressing Complex Objections: We can generally secure an initial extension to address complex objections related to classification (Section 31) or the “broadness” of your specification (Section 32).
• Awaiting Expiry of a Cited Mark: This is a key strategic delay. If your mark is blocked by a prior registration that is due to expire soon (or is already in its 6-month grace period), we can request an extension. The Commissioner will typically grant an extension until one month after that cited mark’s final removal date, allowing the conflict to resolve itself.
• Exceptional Personal Circumstances: The Commissioner will also generally grant extensions for persuasive personal reasons, such as the applicant suffering from a period of ill health or significant financial difficulties.

Reasons that are not persuasive

It is critical to understand what the Commissioner does not consider a valid reason for a long extension. IPONZ expects progress within the initial 12-month period. Filing a request with a weak justification will, at best, result in a very short extension to allow you to file a final response.

Reasons that are not considered persuasive include-

• “More Time Needed”: A simple statement that you “need more time to consider the objections” is not enough.
• “Failure to Instruct”: As your legal agent, we are bound by your instructions. However, stating that we “have not received instructions from the applicant” is not a persuasive reason for a lengthy delay.
• “Agent or Applicant is Temporarily Unavailable”: A standard vacation or holiday for either you or your agent is not considered a valid reason for a significant extension.
• “In the Interests of Justice”: This phrase alone is not a sufficient justification.

Our firm’s role is to ensure we are never in this position. We proactively manage your file, request your instructions well in advance of any deadline, and frame any extension request around active steps we are taking, such as “negotiating consent” or “compiling evidence,” rather than “awaiting instructions.”

“Continued Processing” (The 2-Month Lifeline)

What happens if the worst occurs? You miss a deadline. Your agent miscalculates the date, or your instructions arrive too late. Under the old rules, your application would be irretrievably abandoned.

The Trade Marks Regulations 2003 now provide a powerful, one-time-only safety net, i.e. Continued Processing.

This provision allows you to revive an application that has been abandoned for missing a response deadline. However, the rules are strict and non-negotiable, i.e. a request for continued processing is available only once per application. You must also file the request within two months of the expired deadline. This two-month period cannot be extended. That said, you cannot file for continued processing and then ask for more time. The request must be accompanied by the final, substantive response that addresses all outstanding objections in the Compliance Report.

When we file for continued processing on your behalf, the Commissioner’s office will review the request. If it meets these criteria, the application is “re-instated.” The office will then conduct a new search of the register from the date the application was abandoned to ensure no new conflicting marks have been filed in the interim.

It is important to note that this “revival” can sometimes result in two similar marks co-existing on the register. If a third party filed a similar mark after yours was abandoned but before it was re-instated, IPONZ will not revoke the third party’s mark. This situation creates a “first-to-file” conflict that must be resolved through other legal means.

This makes continued processing a powerful emergency tool, but a poor substitute for diligent management. Our firm’s docketing system and proactive approach are designed to ensure this last-resort option is never necessary.

When is an extension not needed?

Finally, it is just as important to know when not to file an extension. We will not file unnecessary requests. For example, if we have already filed a complete response to a Compliance Report and are simply awaiting the examiner’s reply, no extension is needed. If the examiner maintains their objection, they will issue a new report with a new deadline.

Similarly, if your application has been referred to the Māori Advisory Committee (to assess potential cultural offense), IPONZ will typically not set a response deadline. The application is effectively paused while awaiting the Committee’s advice. No extension is required during this time.

Why work with us?

Your trade mark’s deadlines are the single most critical element of a successful registration. Our firm removes this burden, providing the strategic foresight to know when to act, the legal expertise to justify the request, and the diligence to ensure your rights are never lost to a missed date. Contact us today for a free consultation.