Extensions and halts in trade mark proceedings

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Intellectual Property Office of New Zealand

Trade Mark Hearings

In this guideline

Extensions and halts in trade mark proceedings

This page provides guidelines on requests for extensions of time and halts in trade mark proceedings. The following information is intended to guide and inform parties involved in intellectual property hearings. It reflects the current accepted practice of IPONZ and is intended to be read in conjunction with the:

These guidelines do not constrain the judgement and discretion of the Commissioner; each extension of time or halt request will be considered on its own merits.

1. Extensions of time

Regulation 32

Regulation 32 gives the Commissioner discretion to extend the time for a step to be taken in trade mark proceedings:

  • for up to three months if the Commissioner is satisfied that the extension is reasonable in the circumstances; 1  and
  • for any period (whether or not in addition to a period that has already been granted on the basis of 'reasonable circumstances') if the Commissioner is satisfied that there are genuine and exceptional circumstances that justify the extension. 2

A party can request more than one extension under regulation 32(1) on the basis that the circumstances are 'reasonable', but the total period of extensions must not exceed three months. 3  If a party wants any further extensions beyond three months they will need to satisfy the Commissioner that the circumstances meet the higher threshold of “genuine and exceptional”.

What constitutes ‘reasonable’ and ‘genuine and exceptional’ circumstances is discussed in detail in the sections below.

When granting an extension, the Commissioner has the power to stipulate any terms and conditions on which the extension is granted. 4

1.1 Purpose

The purpose of regulation 32 is to provide the Commissioner with some operational flexibility to grant an extension of time to complete a step in the proceeding where appropriate. An extension of time can be requested to complete any task in the proceeding unless the regulations stipulate otherwise.

Please note that a request for an extension of time in which to oppose a trade mark application must be made under regulation 75. For more information, see the opposition guidelines.

1.2 Extension of time requests must be made on or before the current deadline

The Commissioner can only grant an extension of time if the request is received on, or before, the current deadline set by the IPONZ Hearings Office for the next step in the proceeding. 5 Where a request is received after the deadline has expired, the request will be declined. 6

1.3 Requirements for an extension of time request

A request for an extension of time must be made in writing, and must include the following information:

a) the name and address for service of the party making the request; 7
b) if the party has an agent, the agent’s name; 8
c) the number of the trade mark application or registration that is the subject of the proceeding; 9
d) the period of time of the extension sought; 10 and
e) reasons why the extension being sought is reasonable or, if the requestor has already been granted extensions totalling three months for the current step, details of the genuine and exceptional circumstances which justify a further extension. 11

The request must be submitted online via IPONZ's case management facility. 12  IPONZ will consider whether the request for an extension of time meets the regulatory requirements and will notify both parties of its decision.

1.4 Onus on the party requesting the extension

The onus is on the party requesting an extension of time to provide sufficient detail in its request, and in some cases evidence, to justify the extension. 13  The party must satisfy the Commissioner that there are 'reasonable' or 'genuine and exceptional' circumstances that justify an extension of time. The Commissioner cannot be satisfied that such circumstances exist if the party requesting the extension has not provided any reasons to support its request.

1.5 What are reasonable circumstances?

Regulation 32(1)

Requests for an extension under regulation 32(1) must satisfy the Commissioner that there are 'reasonable' circumstances that justify the extension. This is a lower threshold than 'genuine and exceptional' circumstances under regulation 32(2). 14

To date there have been no judicial decisions on what constitutes 'reasonable circumstances' for regulation 32(1) as amended. The Commissioner, when considering requests under this regulation, has therefore applied the plain meaning of the term. The Oxford English Dictionary defines the word reasonable as: “within the limits of what it would be rational or sensible to expect; not extravagant or excessive; moderate”.

1.6 What are genuine and exceptional circumstances?

Regulation 32(2)

Requests for an extension under regulation 32(2) must satisfy the Commissioner that there are ‘genuine and exceptional circumstances’ that justify the extension [emphasis added].

The leading case on what constitutes ‘genuine and exceptional circumstances’ under regulation 32 is Muir Electrical Co Pty Ltd v The Good Guys Group Ltd. 15 Muir has since been applied in a number of IPONZ decisions.

It is now settled law that a party requesting an extension under regulation 32(2) must satisfy the Commissioner that: 16

  • there are genuine and exceptional circumstances, which is a matter of fact, not a matter of judicial discretion; and
  • this may involve a particular fact that constitutes genuine and exceptional circumstances, or a number of facts that, in combination, constitute genuine and exceptional circumstances; and
  • there must be a causal link between the circumstances and the need for an extension of time to take the particular step; and
  • where the Commissioner is satisfied that the above is made out, the Commissioner still has a residue discretion whether or not to grant the extension. In exercising this discretion the Commissioner must consider the factors relevant to the exercise of such a power including, without limitation, exercising the power in accordance with the Act and Regulations, procedural fairness, prejudice to the parties, and other public interest factors.

The meaning of both ‘genuine’ and ‘exceptional’ circumstances for the first requirement above has been defined as:

  • ‘Genuine circumstances’ means circumstances which are "authentic, sincere, honest". 17
  • ‘Exceptional circumstances’ means circumstances that are "quite out of the ordinary". 18

Extension requests under regulation 32(2) generally require the reasons relied on to be made in a statutory declaration or affidavit. However, in some cases the Assistant Commissioner may be able to glean essential facts from the material held on our file.

The Commissioner is also entitled to rely on factual statements made by counsel for a party regarding matters in respect of which counsel has personal knowledge. 19

1.7 Right to a hearing on Commissioner’s proposed decision

Regulations 123 and 126(2A)

The Commissioner will advise the parties whether or not the Commissioner proposes to grant the extension request. The adversely affected party has 10 working days to request a hearing on this proposed exercise of the Commissioner’s discretion under regulation 123. If the adversely affected party does not request an interlocutory hearing the decision becomes final.

If the adversely affected party requires a hearing they must file a notice of requirement to be heard, together with the hearing fee. 20  The notice must :

(a) contain the affected party’s name and address for service, and if they have an agent, their agent’s name
(b) state the matter in respect of which the hearing is required,
(c) be signed by the affected party, and
(d) be accompanied by the hearing fee.

Upon receipt of a notice, IPONZ will advise both parties and make arrangements for an interlocutory hearing.

See how you can be heard for more information.

2. Halt of proceeding

Regulation 28

The Commissioner may halt a proceeding at any stage under regulation 28 on either:

  • the Commissioner’s own initiative; or
  • on the application of one or both of the parties.

2.1 Purpose

The purpose of a halt is to pause the proceeding. This allows the Commissioner to deal with related issues or matters that will directly affect the outcome of the proceeding, for example:

  • settlement negotiations between the parties;
  • procedural, pleading or evidential issues;
  • instructions from the International Bureau;
  • aligning deadlines in related proceedings to achieve operational efficiencies;
  • the determination of other co-pending proceedings between the parties;
  • confirmation of a task being completed such as deposit of security for costs or service of evidence.

The Commissioner can halt the proceeding on any terms and conditions that the Commissioner considers appropriate, but for no longer than six months at a time. 21 The Commissioner may halt the proceeding for further periods, but on each occasion for no more than six months. 22  If at any stage the Commissioner considers the halt is no longer appropriate, the Commissioner may lift the halt and recommence the proceeding. 23

2.2 Halt on the Commissioner’s own initiative

The Commissioner may halt a proceeding on the Commissioner’s own initiative where appropriate. Some of the reasons to do so are outlined above under Purpose. IPONZ will inform both parties of the Commissioner’s proposal to halt the proceeding on the Commissioner’s own initiative, and the reasons why it is considered appropriate.

2.3 Requirements for a halt request

A request for a halt must be made in writing, and must include the following information:

(a) the name and address for service of the party making the request; 24
(b) if the party has an agent, the agent’s name; 25
(c) the number of the trade mark application or registration to which the proceeding relates; 26
(d) the period of time of the halt sought; 27
(e) submissions as to why the halt is required; and 28
(f) whether the other side consents to the halt by having the other side countersign the request (for example where there are settlement negotiations).

The request must be submitted online via IPONZ's case management facility. 29  IPONZ will consider whether the request meets the minimum requirements and will notify both parties of the Commissioner’s proposed decision. Each halt request will be considered on its own merits, and the reasons submitted for the halt will assist in determining the appropriate period for the halt.

2.4 When a halt request will be refused

A request for a halt will be refused if:

  • no reasons are given for the request; 30 or
  • if the deadline for the particular step has expired (ie the request for the halt was not received on or before the relevant deadline). 31

2.5 Settlement negotiations

It is appropriate to halt a proceeding to allow for settlement negotiations as they have the potential to achieve an efficient resolution of the dispute. However, in the event that settlement negotiations become protracted the Commissioner may decline further halt requests (even when signed by both parties) on the basis of public interest in both:

  • achieving certainty on the register for third parties; and
  • progressing proceedings in a timely manner.

If the parties have entered into settlement negotiations, the request for a halt should be countersigned by the other party to show their consent to the halt.

2.6 Requests for further halts

Whether or not further halt requests will be granted will depend on the circumstances of each case. Generally speaking, the longer a proceeding has been halted the more supporting documentation and information that will be required to satisfy the Commissioner that it is appropriate to continue the halt.

Examples of supporting documentation include:

  • a written statement clearly setting out the reasons why a further halt is required;
  • where parties are in on-going settlement negotiations, a statutory declaration and/or written statement setting out the steps taken to try and achieve resolution of the dispute, what is being done generally to progress the negotiations, and an indication of when the negotiations are likely to be completed;
  • copies of letters and/or emails between the parties (the letters and emails may have legally privileged content blanked out) evidencing efforts to resolve the dispute.

2.7 When further halt requests will be refused

A request for a further halt will be refused if:

  • no reasons are given for the request; 32 or
  • if the deadline for the particular step has expired i.e. the request for the halt was not received on or before the relevant deadline; 33 or
  • if the request is identical to the previous request, and no additional information is provided.

2.8 Right to a hearing on Commissioner’s proposed decision

Regulation 123 and Regulation 126(2A)

The Commissioner will advise the parties whether the Commissioner proposes to either:

  • halt the proceedings on the Commissioner’s own initiative; or
  • to refuse or accept a party’s request to halt the proceeding.

The adversely affected party has 10 working days to request a hearing on this proposed exercise of the Commissioner’s discretion under regulation 123. If the adversely affected party does not request an interlocutory hearing the Commissioner’s proposal becomes final.

If the adversely affected party requires a hearing they must file a notice of requirement to be heard, together with the hearing fee. 34 The notice must:

(a) contain the affected party’s name and address for service, and if they have an agent, their agent’s name,
(b) state the matter in respect of which the hearing is required,
(c) be signed by the affected party, and
(d) be accompanied by the hearing fee

Upon receipt of a notice, IPONZ will advise both parties and make arrangements for an interlocutory hearing.

See how you can be heard for more information.

2.9 Practice when a halt is lifted

Regulation 28

The Commissioner may at any stage, while the proceeding is halted, recommence the proceeding. 35

If the parties have not responded on or before the end of the relevant halt period, the proceedings will automatically be recommenced from that date.

In situations where the current deadline for completing the next step in the proceeding has already expired, or is less than one month away, IPONZ's practice when recommencing the proceeding is to allow the party responsible for completing the current step in the proceeding a further one month to complete that step. In effect, the Commissioner is halting the proceeding on the Commissioner’s own initiative for a further one month to allow the current step in the proceeding to be completed.

Footnotes

  • 1 Regulation 32(1)
  • 2 Regulation 32(2)
  • 3 Regulation 32(4)
  • 4 Regulation 32(3)
  • 5 Muir Electrical Co Pty Ltd v The Good Guys Group Ltd HC Auckland CIV-2009-404-4965, 18 December 2009, at [27]
  • 6 There are numerous deadlines set during proceedings, and there is no discretion to extend the deadline (except evidence – regulation 34 – Evidence out of time) once it has expired.
  • 7 Regulation 5(a)
  • 8 Regulation 5(b)
  • 9 Regulation 5(c)
  • 10 Regulation 32
  • 11 Ibid
  • 12 Regulation 8
  • 13 McFarlane Fisheries v The Commissioner of Trade Marks [1996] 3 NZLR 437 at 441.
  • 14 Regulation 32 was amended on 29 April 2013 which introduced a new two tiered approach to assessing extension requests by adding a new lower threshold of 'reasonable circumstances' for extensions for a period of up to 3 months. The threshold of 'genuine and exceptional circumstances' was retained for any further extensions beyond this period.
  • 15 Supra at note [5]
  • 16 AnchorFoods Pty Limited v New Zealand Milk Brands Limited [2013] NZIPOTM 44 (13 November 2013) at [27]; referring to Epoch Company Ltd v Flowil International Lighting (Holding) B V [2011] NZIPOTM 38 (25 October 2011). As also applied in New Zealand New Paradise Limited v GOJO Industries Inc [2014] NZIPOTM 37 (12 August 2014).
  • 17 Anchor Foods Ibid at [31] citing Underground Espresso Holdings Ltd v Union of Orthodox Jewish Congregations of America [2012] NZIPOTM
  • 18 Supra at note [5], paras 84 and 85, citing Awa v Independent News Auckland Ltd [1996] 2 NZLR 184 at 186.
  • 19 Supra at note [5] at paragraphs 76, 77 and 79. As applied in Anchor Foods Pty Limited v New Zealand Milk Brands Limited [2013] NZIPOTM 44 (13 November 2013)
  • 20 Regulations 123(1) and 126(2A)
  • 21 Regulation 28(2)
  • 22 Regulation 28(3)
  • 23 Regulation 28(4)
  • 24 Regulation 5(a)
  • 25 Regulation 5(b)
  • 26 Regulation 5(c)
  • 27 Regulation 28(1)
  • 28 Regulation 28(1)
  • 29 Regulation 8
  • 30 Supra at note [27] – to exercise discretion under regulation 28(1) the Commissioner must first be satisfied that the exercise of the discretion to grant a halt is appropriate. Such discretion cannot be properly exercised where no reasons are given for the halt request.
  • 31 Supra at note [5] at para 29
  • 32 Supra at note [27] – to exercise discretion under regulation 28(1) the Commissioner must first be satisfied that the exercise of the discretion to grant a halt is appropriate. Such discretion cannot be properly exercised where no reasons are given for the halt request.
  • 33 Supra at note [5] at para 29
  • 34 Regulations 123(1) and 126(2A)
  • 35 Regulation 28(4)

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