K-TEC, INC V HEALTHY FOODS, LLC [2016] ATMO 4

K-Tec opposed the registration of the below mark in the name of Healthy Foods covering electric food processors in Class 7.

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This matter, however, concerned the application by the opponent to allow it to make an amendment to its Statement of Grounds and Particulars (SGP) after filing – the amendment being the addition of the ground pursuant to section 58A of the Trade Marks Act (the Act).

It is only possible for an amendment, in the form of adding a ground, to be allowed when the Registrar finds that the opponent could not reasonably have been aware of the information under which the new ground arises at the time the SGP was filed. The addition of the ground to the SGP came about as a result of the applicant’s evidence-in-answer, which brought to light facts that were not known to the opponent at the time the SGP was filed. As such, this leg of the requirement was fulfilled.

There is, however, another requirement; that the amendment to the SGP is the availability of the additional ground itself.

On this additional requirement, the Hearing Officer noted that ‘[t]he purpose of section 58A is therefore to extend the consideration of s 44(4) [prior continuous use] into the opposition context…extending to applications for registration which might otherwise have proceeded to registration due to s 44(4)’. In other words, even though section 58A outlines a ground for opposition where an application is accepted on the basis of prior continuous use, the ground may still be applicable where it becomes apparent from evidence in the opposition that the applicant may argue in the proceedings that its application should be allowed on the basis of prior continuous use.

Accordingly, the Hearing Officer noted that the request met the additional requirement. However, after weighing the prejudice likely to be suffered, the public interest, and the lateness of the opponent’s request (only six days prior to a scheduled Hearing and some nine months after the applicant’s evidence), the Hearing Officer denied the application to amend the SGP.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.