Inter partes actions before the Registrar: Extensions of time practice

The current practice for the handling of extension of time requests in inter partes actions before the registrar has been subject of a review. Under the current practice, on receipt of a Form TM9 (17Kb), the registrar writes to the other party(ies) to seek their comments on the request and allows a period of fourteen days for these to be provided. At the expiry of this fourteen day period, the registrar makes a decision on the extension request based on all the information available to him. He then writes to the parties to inform them of his decision and allows a further period of fourteen days for a hearing to be requested should either party disagree with that decision.

The review has shown that this practice has led to delays in the determination of extension of time requests; in some cases the request is not determined before the expiry of the requested period. In an effort to provide a quicker response to extension of time requests, the registrar proposes to amend the current practice.

On receipt of a properly filed Form TM9 the registrar will make a preliminary decision on its grant or refusal and notify the parties accordingly, in writing. A period of fourteen days from the date of the notification will be allowed for either party to the proceedings to provide full written arguments against the decision and to request a hearing. If no such response is received within the time allowed, the decision will automatically be confirmed.

When filing a Form TM9 the requester must confirm that the form (and any attachment) has been copied to every other party to the proceedings in accordance with rule 68(2)(a) of the Trade Marks Rules 2000 (see also Registrar's Direction in relation to Extensions of time). Full reasons in support of the request must be provided and, in the case of requests filed after the time or period has expired, full reasons also to explain the delay in making the request must be provided. It is likely that the reasons for the request will need to be filed on a separate sheet attached to the Form TM9 (17Kb). The extension will not be granted if the request has not been copied to the other party(ies) to the proceedings or in the absence of detailed reasons.

This practice will come into force with effect from 1 January 1999.