COVID-19 – Trade Mark Office Practice Update

Australia

The Australian Trade Marks Office’s operations have been largely unaffected by the coronavirus outbreak. Processing and examination timeframes have not been significantly impacted, and the day-to-day operations of the Office remain, for the most part, unchanged.

The Australian Office has very recently implemented a process for granting free three months extensions of time in instances where COVID has led to delays. However, these extensions need to be applied for according to the guideline issued, which requires a declaration concerning the impact of the virus on the applicant. Further, they are not currently available for the following trade mark deadlines:

  • Renewals (although the usual grace period is still available)
  • WIPO deadlines where IP Australia is acting as Madrid Office of Origin (note that continued processing may be available from WIPO)
  • Meeting minimum filing requirements
  • Filing an application with convention priority (under the Paris Convention), and claiming convention priority
  • Filing a divisional application
  • Requesting renewal or registration outside the ‘grace period’
  • Amendment of an application before its particulars are published
  • Certain periods relating to border control measures and administered by the Australian Border Force (Customs) relating to trade marks on imported goods
  • Responding to a notice or advertisement by the Australia Competition and Consumer Commission in relation to an application for a certification trade mark
  • Periods relating to Headstart applications
  • Periods relating to trade marks attorney registrations and discipline
  • Filing a notice of opposition to an extension of time
  • Time periods in matters before a Court or the Administrative Appeals Tribunal

If you are concerned about your client’s ability to meet any Australian trade mark deadlines and would like advice, please feel free to contact us.

Opposition hearings are only being held by way of video or phone conferencing, or written submissions. There are no in person hearings.

New Zealand

The New Zealand Office (‘IPONZ’), has recently notified local firms of certain changes to their operations.

While COVID reasons can be relied upon to obtain extensions of time, IPONZ has also begun automatically extending certain response deadlines.

At the time of writing, this has only been implemented for applications with deadlines this week, however we have been informed this will be reviewed on a weekly basis and is likely to continue for some time.

IPONZ has advised that applicable deadlines include responding to trade mark examination reports (for national applications only) and submitting evidence in opposition proceedings. The Office will issue notifications to parties whose deadlines have been automatically extended; if you have any questions about this, please feel free to contact us.

As such extensions are not guaranteed and as extensions of time in New Zealand are fee free, the safer course at present is to request an extension rather than rely upon an automatic extension being granted.

IPONZ’s quick processing and examination times have slowed following examiners and other staff shifting to remote working but delays are not excessive. We have been informed that applications for extensions of time, changes of agents, and pre-filing advisory services are being prioritised.

This article was written by Kasumi Champion, Trade Mark Assistant to Principal, Sean McManis at Shelston IP