The appellant, Muir, was the owner of 12 registered trade marks in New Zealand for the word mark THE GOOD GUYS and for a logo incorporating the same name. In December 2007, the respondent TGGGL filed an application for revocation of these marks for non-use. Muir filed a counterstatement and its evidence in opposition.

After certain extensions of time, TGGGL was required to file its evidence by 28 February 2009. TGGGL failed to file its evidence by that deadline or to seek any extension of time. On 19 March 2009, the Commissioner of Trade Marks wrote to the parties advising the application for revocation was “considered discontinued” and that the trade marks would remain on the register. That same day, after receiving the notification, the solicitors for TGGGL sought a retrospective extension of time. The solicitors advised the Commissioner that they had drafted a letter on 27 February 2009 (i.e. prior to the deadline of 28 February 2009) seeking an extension of time and by oversight had failed to send the letter.

Following an opposed hearing, the Assistant Commissioner of Trade Marks held, in a written decision, that she had jurisdiction to grant a retrospective extension of time and that the TGGGL had established evidence of genuine and exceptional circumstances. Muir appealed and on appeal the Assistant Commissioner’s decision was overturned. Three important issues were clarified by the Court:

(i)   No provision to grant retrospective extensions of time

Lang J held that the 2002 Trade Marks Act and Regulations contained a significant shift in emphasis so far as the power to grant extensions of time was concerned. There was no longer a power to grant retrospective extensions. The grounds were much more restrictive and only “if satisfied in a particular case that there are genuine and exceptional circumstances that justify an extension of time”.

The fact that Regulation 98(3) (and cognate equivalent provisions for other types of trade mark proceedings) now use the term “discontinue” was also recognised by Lang J as significant. This was a term encountered in the Courts and had been chosen advisedly. In Regulation 98(3) Parliament had nominated the point by which the respondent (being the applicant for revocation) had to file its evidence or advise the Commissioner that it did not intend to file evidence. Because TGGGL had not filed its evidence nor sought an extension of time before the deadline, it had permitted the discontinuance provided in Regulation 98(3) to come into play. It was not possible to turn the clock back. The application was at an end and the Commissioner had no power to grant a retrospective extension.

(ii)  Genuine and exceptional circumstances

Lang J went on to consider genuine and exceptional circumstances. In particular, he held that the phrase ‘quite out of the ordinary’ aptly captured the flavour that Parliament intended by the phrase ‘exceptional’:

“The Commissioner will therefore be entitled to grant an extension in circumstances that are quite out of the ordinary. That threshold may be reached by virtue of a single factor or by the combined weight of all relevant factors. In the final analysis, however, the extension cannot be granted unless the circumstances of a case are exceptional.”

Here the Court held it was difficult to see how the circumstances were exceptional. The failure to send the letter to the Commissioner was a simple oversight and could not be regarded as being unusual or out of the ordinary. Lang J held that oversight is a common cause of deadlines being missed. That is not to say that oversight will never amount to an exceptional reason. An unusual combination of events may cause a deadline to be missed and that may amount to exceptional circumstances but that was not suggested by TGGGL to be the case here. The consequence of discontinuance could not be regarded as being out of the ordinary, let alone quite out of the ordinary.

(iii)  Is evidence required in support of an extension application

Here no evidence had been filed in the form of an affidavit or affirmation prior to the hearing. As to the circumstances, Lang J held that it will generally be necessary for the applicant in a contested case to place assertions of fact before the Commissioner formally by way of affidavit or statutory declaration. This is particularly important where the facts are known to the party rather than to counsel. Lang J held that (as here) failure to adduce evidence formally in applications such as the present may not necessarily be fatal. In some cases, the essential facts may be able to be gleaned from the material held in the Commissioner’s file. Where those facts are not seriously contested there may be little point in requiring the applicant to file further evidence setting out information that is already apparent from the material held on the Commissioner’s file. Here the failure to advance the explanation in a more formal way was not necessarily fatal to the application on its own.

However as to the consequences of the discontinuance there was no affidavit or statutory declaration and the Court had been left to rely on submissions. Lang J did not consider the Court should be required to proceed on that basis in the case of a seriously contested issue.