Inadvertent discontinuance of proceeding cannot be remedied
A recent decision of the New Zealand High Court has reinforced the need to meet deadlines in trade mark proceedings (Muir Electrical Company Pty Limited v The Good Guys Group Limited, High Court Auckland CIV-2009-404-4965, 18 December 2009).
In December 2007, The Good Guys filed an application for the revocation of a number of trade mark registrations in the name of Muir Electrical on non-use grounds. Muir Electrical then filed a counterstatement and evidence in support of the continued registration of its trade marks.
After receiving the counterstatement, and having been granted several extensions of time, The Good Guys were given a deadline of 28 February 2009 for filing evidence in support of its application. The deadline expired without evidence being filed, or a further extension being sought by The Good Guys. It transpired that The Good Guys’ lawyers had drafted a letter requesting a further extension but, by oversight, did not send it.
New Zealand law states that if, after receiving a counterstatement, the applicant does not, within the prescribed period, file evidence, or notify the Commissioner of Trade Marks that it withdraws the application or does not intend to file evidence, the application for revocation is discontinued. The prescribed period may be extended, but only if the are “genuine and exceptional” circumstances which justify the extension.
On 19 March 2009 both Muir Electrical and The Good Guys were notified that the revocation application was “considered discontinued”. That same day, The Good Guys applied for a retrospective extension to file evidence out of time.
The High Court held that the Commissioner had no power to grant an extension after the deadline had expired. Accordingly, the application for revocation was discontinued.
In addition, the High Court found that – even if there were a power to grant retrospective extensions – the oversight in not sending the letter did not meet the threshold of “genuine and exceptional” circumstances which would justify the extension. While circumstances may often be “genuine”, to meet the “exceptional” threshold requires a high standard.
Importantly, in an obiter dicta statement, the High Court said that the period for filing a notice of opposition may only be extended if an extension of time is both requested and granted before the deadline has expired. The Intellectual Property of New Zealand is applying this ruling.
The High Court’s decision stresses the importance of noting and meeting deadlines in trade mark matters. At the very least, an application for an extension of time should be filed well in advance of any impending deadline.
February 2010
