11 October 2010

Rules for Calculation of Time Periods Measured in Months

Make sure you mark the
right date!
In an Official Notice issued on 30 September 2010, which appears to have taken everybody by surprise, the UK Intellectual Property Office (UKIPO) has announced a change in practice in relation to the period allowed for filing a Notice of Opposition to the registration of a national trade mark.  Specifically, the expiry of the two-month opposition period has been reduced by one day.

For example, if an application is published for acceptance on 6 October 2010, it would previously have been the case that a Notice of Opposition could be filed up until 6 December 2010.  Under the new practice, the final date for filing a Notice of Opposition is 5 December 2010.

While we do not usually trouble ourselves with trade mark matters on the aptly-named Patentology blog, this sudden change in practice by the UKIPO gave us pause to wonder whether some similar surprise may be lurking unnoticed in any of the regulations we operate under in our day-to-day practice.  We are pleased to report that this seems unlikely and, indeed, this particular UK rule appears to be an anomaly.


The UKIPO thas concluded that up until now it has been erroneously allowing opponents one day more than the Trade Marks Rules 2008 permit within which to file a Notice of Opposition.  The relevant rule states:

...the time prescribed for the purposes of [filing a Notice of Opposition] shall be the period of two months beginning with the date on which the application was published. (Emphasis added)
The Official Notice cites authority that the phrase "beginning with" requires that the start date be included in the period (as opposed to "from", when the first day is excluded from the calculation), while "month" means a calendar month, whereby "the period expires with the day in the succeeding month immediately  preceding the day corresponding to the date upon which the period starts.


As the Official Notice subsequently points out, there are other periods defined in the Trade Marks Rules 2008, such as the period within which the applicant must file a counter-statement, that are defined differently:

...the relevant period shall begin on the notification date and end two months after that date. (Emphasis added)
This period is clearly inclusive of both the starting and ending dates.

In our experience, similar time periods in a range of jurisdictions are inclusive of the ending date, and we therefore cannot help wondering if this one anomoly that the UKIPO has identified was unintentional?


In Australia, subsection 36(1) of the Acts Interpretation Act 1901 provides that:

Where in an Act any period of time, dating from a given day, act, or event, is prescribed or allowed for any purpose, the time shall, unless the contrary intention appears, be reckoned exclusive of such day or of the day of such act or event.
Notably, this provision does not prescribe any particular form of language.  Hopefully, therefore, we need not fear any inadvertent inconsistencies!

Opposition Period for Australian Trade Mark Applications

Regulation 5.1 of the Trade Marks Regulations 1995 states that "the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal ."  By virtue of Regulation 2.2, which defines the interpretation of "month" within the Regulations, the period unquestionably includes the day of the final month of the period having the same number as the date of advertisement. 

We note that the Australian definition is expressly intended to be consistent with Rule 4 of the regulations relating to the Madrid system for international trade mark registration, whicn states:
Any period expressed in months shall expire, in the relevant subsequent month, on the day which has the same number as the day of the event from which the period starts to run...
Opposition Period for Australian Patent Applications

Regulation 5.3 the Australian Patents Regulations 1991 specifies that an opponent:

...must file a notice of opposition in the approved form within 3 months of publication in the Official Journal of the notice of acceptance...
Additionally, sub-regulation 1.3(7) refers to Rule 80.2 of the Regulations under the Patent Cooperation Treaty, which states that:

When a period is expressed as one month or a certain number of months, computation shall start on the day following the day on which the relevant event occurred, and the period shall expire in the relevant subsequent month on the day which has the same number as the day on which the said event occurred...

Section 35 of the New Zealand Interpretation Act 1999 is more particular about specific forms of lanaguage than its Australian counterpart, and specifies that:
  1. A period of time described as beginning at, on, or with a specified day, act, or event includes that day or the day of the act or event.
  2. A period of time described as beginning from or after a specified day, act, or event does not include that day or the day of the act or event.
  3. A period of time described as ending by, on, at, or with, or as continuing to or until, a specified day, act, or event includes that day or the day of the act or event.
  4. A period of time described as ending before a specified day, act, or event does not include that day or the day of the act or event.
The relevant provisions of the New Zealand Patents and Trade Marks Acts and Regulations generally use the "from or after" form of language, thus including the final day having the same number as the initiating day, act or event (eg publication of acceptance of an application).

For example, subsection 21(2) of the Patents Act 1953 specifies that notice of opposition "shall be given within 3 months from the date of the publication of the complete specification," while subregulation 75(1) of the Trade Marks Regulations 2003 requires filing of a Notice of Opposition "within 3 months after the date when acceptance of registration was first advertised."


The time prescribed for filing a Notice of Opposition, in accordance with the new UKIPO practice, appears to be anomalous. 

The equivalent Australian and New Zealand legislation and regulations, relating to both patent and trade mark oppositions, are unambiguous, either due to express provision or when read in light of the relevant interpretation statutes. 

Furthermore, there are provisions regarding the calculation of dates in related international treaties, including the Madrid Protocol and the Patent Cooperation Treaty, that are to the same effect.  While there is no obligation to employ the same calculation methods in seperate national provisions, this would certainly seem to be desirable.

We would also comment, although we have not researched the topic, that we have not encountered a similar anomaly in the calculation of deadlines in the laws and regulations of other major jurisdictions.

We cannot help wondering, therefore, whether somebody just made an error in drafting the current UK Trade Marks Rules!


In closing, we would like to direct our readers' attention to a posting on this same topic on the IPKat blog,which attracted a response from Allan James of the UKIPO.  His comment states, in part:

The matter was raised with us by a firm of Trade Mark Attorneys who questioned whether ... we were calculating the opposition period correctly. ... [w]e decided they were clearly right.
Once we had come to that realisation we were bound to act. ...
On average, 15 oppositions are filed each week on the last day of the opposition period. ...
... until a change is made to the Rules we are bound to apply the UK law as it currently stands.
Allan's complete comment can be read here.


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