[1.3] STATEMENT OF GROUNDS AND PARTICULARS*
Once the NIO has been filed in accordance with the requirements, the opponent will need to file a Statement of Grounds and Particulars ("SGP") within one month of filing the NIO in order to complete the Notice of Opposition.(1) The Statement of Grounds and Particulars will set out the grounds and material facts on which the opposition is based.(2) It does not need to set out the evidence in support of those facts.(3)
The SGP must be based on any of the following grounds(4):
- S.39 – The trade mark consists of or contains a certain prohibited or prescribed sign.(5)
- S.41 - The trade mark is not capable of distinguishing the applicant’s goods and/or services from those of other traders.(6)
- S.42 - The trade mark is scandalous or its use would be contrary to law.(7)
- S.43 – The trade mark is likely to deceive or cause confusion.(8)
- S.44 – The trade mark is substantially identical or deceptively similar to a prior application or registration.(9)
- S.58 – The applicant is not the owner of the mark.(10)
- S.58A – If the mark has been accepted on the grounds of prior use, the opponent has earlier use of a substantially identical or deceptively similar mark.(11)
- S.59 – The applicant does not intend to use the mark.(12)
- S.60 – Due to the reputation of a similar mark, the use of the mark is likely to deceive or cause confusion.(13)
- S.61 – The trade mark contains or consists of a false geographic indication.
- S.62(1) – The application was amended contrary to the Act.(14)
- S.62(2) - The trade mark was accepted on the basis of false evidence or representations.(15)
- S.62A – The application was made in bad faith.(16)
- For certification marks only – s.177 – The trade mark is not capable of distinguishing the goods or services certified by the applicant or an approved certifier from goods or services not so certified.(17)
- For defensive marks only – s.187 – Use of the defensive mark in relation to the goods or services is not likely to indicate that there is a connection between those goods or services and the registered owner.(18)
The Registrar must be satisfied as to the adequacy of the SGP.(19) If the SGP is considered to be inadequate, three possible events may follow.(20) The Registrar may:
- Require rectification of particulars by the opponent;
- Dismiss the opposition if all of the grounds are inadequately particularised; or
- Delete inadequate information and consider the opposition on that basis.
Further deletions or dismissal may occur upon rectification by the opponent. The regulations make such decisions of the Registrar to delete or dismiss reviewable by the AAT.(21)
These grounds for dismissing an opposition are made pursuant to s.54(3) of the Act which provides that the Regulations may prescribe the circumstances in which the Registrar may dismiss the opposition.
It would appear from the Explanatory Memorandum that the Statement of Grounds and Particulars will be the new substantive procedure in the set of amendments introduced by the Raising the Bar Act 2012 and Raising the Bar Regulations 2013 (No.1). The purpose of this amendment is to reduce costs and “focus oppositions earlier”.(22) Therefore although it mimics the concept of court pleadings, in the opinion of the author undue formality requirements should be avoided. These documents need to be simple for their purpose to be fulfilled. The prospective opponent should be made to ‘flag’ the issue sufficiently for the applicant to identify the argument and nothing more. There should be no need to preemptively counter possible defenses that have not yet been raised.
By way of guidance alone, set out below is an example of a satisfactory Statement of Grounds and Particulars for an opposition under s.44 where evidence of prior use or honest concurrent use was not submitted to obtain acceptance.
Statement of Grounds and Particulars
Ground - 44
- The mark is substantially identical or deceptively similar to a prior application or registration for similar services or closely related goods.
Particulars
- The opponent, Joe Bloggs, is the registrant of Australian Trade Mark No. 123 567 BLOGGS for clothing, footwear and headgear in class 25 and education services in class 41 (“TM 123 567”)
- The priority date for TM 123 567 is 1 July 2001
- The applicant filed Australian Trade Mark No. 567 890 BLIGGS for retailing of clothing, footwear and headgear in class 35 on 2 November 2012 (“TM 567 890”)
- The priority date for TM 567 890 is 2 November 2012
- BLIGGS is deceptively similar to BLOGGS
- “retailing of clothing, footwear and headgear” in class 35 are closely related services to the goods “clothing, footwear and headgear” in class 25
The approved SGP form is available on the IP Australia website at: http://www.ipaustralia.gov.au/forms/trade-marks/tm00034-statement-grounds-particulars.pdf