Brands Limited v Liberty Procurement Co. Inc

Brands Limited, as the applicant, sought to register a trade mark, and Liberty Procurement Co. Inc. opposed this application. The dispute concerned whether the grounds of opposition, specifically those under sections 58 and 60 of the relevant Act, were validly raised and established. The decision was made by Adrian Richards.

The primary legal issues before the court were whether the opponent had validly included a ground of opposition under section 58 of the Act, given that the relevant box on the Statement of Grounds and Particulars (SGP) had not been ticked, and whether the opponent had established any of the grounds of opposition pressed at the hearing, namely sections 58 and 60. The court also considered the opponent's request to amend the SGP to include section 58.

The court determined that the opponent could not add section 58 as a ground of opposition because regulation 5.12(3) of the Regulations restricted the addition of new grounds to information the opponent could not have reasonably been aware of at the time of filing. As the opponent claimed to have always intended to rely on section 58, this regulation was deemed unassailable. Despite this, the court indicated it would still consider submissions on section 58. Ultimately, the court found that the opponent had not established any ground of opposition.

Consequently, the court ordered that the trade mark application proceed to registration one month from the date of the decision, unless an appeal was filed. The court also awarded costs against the opponent on the official scale.