3Floorsup Pty Ltd v Fiix Inc

The matter before the Delegate of the Registrar of Trade Marks concerned an application by 3Floorsup Pty Ltd (the Opponent) to amend its Statement of Grounds and Particulars (SGP) in opposition proceedings against Fiix Inc (the Applicant). The Opponent sought to add a ground of opposition under section 58A of the *Trade Marks Act 1995* (Cth) (the Act). This amendment was requested in anticipation that the Delegate might accept the Applicant's trade mark application under section 44(4) of the Act, which would then enliven the section 58A ground.

The central legal issue was whether the Delegate should exercise their discretion under regulation 5.12 to permit the Opponent to amend its SGP by adding the section 58A ground. This required consideration of whether the proposed amendment related to information of which the Opponent could not reasonably have been aware at the time of filing the original SGP, and the prejudice that such an amendment might cause to the Applicant. The Delegate also had to balance this against the public interest in the efficient and cost-effective conduct of proceedings before the Registrar.

The Delegate reasoned that the Opponent had not provided a full and frank explanation for the delay in seeking the amendment, which was made late in the proceedings. The Delegate considered that allowing the amendment at this stage would cause prejudice to the Applicant. Consequently, the Delegate concluded that the discretion to amend the SGP should not be exercised in favour of the Opponent, particularly in light of the public interest in the timely and efficient progression of trade mark opposition proceedings.

The Delegate refused the Opponent's request to amend the SGP to add the ground under section 58A of the Act. The hearing on the substantive matter would be scheduled in due course.