Request by 1661, Inc. to amend the statement of grounds and particulars in the opposition by 1661, Inc. to the registration of trade mark application number 2157337 (24, 25, 35) – GOAT CREW – in the name of TF... - [2025] ATMO 138

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Request by 1661, Inc. to amend the statement of grounds and particulars in the opposition by 1661, Inc. to the registration of trade mark application number 2157337 (24, 25, 35) – GOAT CREW – in the name of TF Intellectual Property Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Frances St John of Counsel instructed by Ashurst

Applicant: Ian Horak of Kings Counsel instructed by HWL Ebsworth Lawyers

Decision:

2025 ATMO 138

Trade Marks Act 1995 (Cth) reg 5.12 – request to amend statement of grounds and particulars – request allowed – statement of grounds and particulars amended

Background

Pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] registration of trade mark application 2157337 for GOAT CREW (‘Trade Mark’) in the name of TF Intellectual Property Pty Ltd (‘Applicant’) has been opposed by 1661, Inc. (‘Opponent’). The Opponent now seeks to amend its Statement of Grounds and Particulars (‘SGP’) under reg 5.12(1)(d). The Opponent made two requests to amend the SGP. In the first request, filed on 17 January 2025 (‘primary amendment’) the Opponent asked for the following amendments:
§to replace all references of the parent application number 2154215 (‘parent application’) with divisional trade mark number 2421707 (‘divisional application’) under the ss 44, 58A and 60 grounds of opposition;
§to add ‘Amended’ to the header line;
§to change Maria Sun’s position from Counsel to Partner;
§to change Ashurst’s file reference; and
§to change filing date of SGP.

[1] Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

On 31 January 2025, the Trade Marks Office (‘TMO’) issued a notice informing the parties that it intended to allow the primary amendment to replace all references of trade mark numbers 2154215 to 2421707 under the ss 44, 58A and 60 grounds of opposition, and decline all other primary amendments. The notice provided the Applicant with an opportunity to make representations on the matter. On 13 February 2025 the Applicant wrote to the TMO objecting to all the proposed primary amendments to the SGP. Then on 5 March 2025 the TMO sent a notice to the parties declining the primary amendments to the SGP.
The Opponent requested to be heard on the matter on 19 March 2025. The Applicant subsequently gave notice on 9 April 2025 that it planned to attend the hearing.
On 13 May 2025 the Opponent filed its second request to amend the SGP under reg 5.12(1)(d) (‘further amendments’). The further amendments correct the priority dates of two trade marks relied upon by the Opponent as follows:
·to amend the priority date of trade mark number 1536094 for KID BY GOAT in class 25, to the priority date of 16 November 2012 (rather than 12 November 2012); and
·to amend the priority date of divisional trade mark application number 2421707 for GOAT in classes 9, 25, 35, 38 and 42, to the convention priority date of 25 September 2020 (rather than 8 February 2021, as recorded in the primary amendments).

On 15 May 2025 I informed the parties that I intended to allow the further amendments to the SGP and informed the Applicant that any objections to the proposed amendments should be filed in its written submissions before the hearing.
I heard the matter by videoconference on 18 June 2025. Frances St John of Counsel instructed by Maria Sun of Ashurst appeared on behalf of the Opponent. Ian Horak of King’s Counsel instructed by Helen Kavadias and Kirsten Schreuder of HWL Ebsworth Lawyers appeared on behalf of the Applicant. The parties’ oral submissions were supported by written submissions filed prior to the hearing. The Opponent also filed the Declaration of Maria Sun, made on 28 May 2025, with Annexures MS-1 to MS-11.

Discussion and Reasons

Regulation 5.12 provides:
5.12 Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
The Opponent filed its requests pursuant to reg 5.12(1)(d) which affords the Registrar of Trade Marks (‘Registrar’) discretion to amend the facts and circumstances forming the basis for the grounds.
The primary amendments can be broken down into two parts. The first part involves the request to replace all references of the parent application to the divisional application under the ss 44, 58A and 60 grounds of opposition. Whether a request to amend a parent application to a divisional application falls under reg 5.12(1)(d) was considered by Delegate Berger in 1661, Inc. v G.O.A.T. Lifestyle Pty Ltd.[2] This case considered a request by the same Opponent to amend the SGP by replacing all references of the same parent application to the same divisional application under the ss 44 and 60 grounds of opposition. Delegate Berger stated:
Although the Applicant has not objected to the amendment of the parent application number 2154215 (‘Parent Application’) to divisional application trade mark number 2421707 (‘Divisional Application’), it is appropriate for me to consider whether that amendment should be granted. I believe that this is an amendment to the facts and circumstances forming the basis of the grounds under reg 5.12(1)(d). This amendment does not alter the basis of the ss 44 and 60 grounds as claimed with respect to the Opponent’s prior rights in GOAT. The details of the Parent Application and the Divisional Application are the same except for a slight restriction in the class 9 goods of the Divisional Application. This restriction does not affect the dispute between the parties under ss 44 and 60 which is directed only to the class 25 goods of the Application. Regulation 5.12(3) does not apply to amendments under reg 5.12(1)(d) and therefore, under reg 15.12(2), I may grant the amendment if I think it is appropriate to do so.[3]
[2] [2024] ATMO 200 [33].
[3] [2024] ATMO 200 [33] (emphasis added).
I also consider the replacement of the parent application with the divisional application falls under reg 5.12(1)(d). The details of the Opponent’s parent application and divisional application are the same except for the narrowing of the goods in class 9 of the divisional application. Moreover, the amendment has little further bearing on the nature of the dispute under the grounds of opposition.
The second part of the primary amendments involves changes to Maria Sun’s position from Counsel to Partner and to Ashurst’s file reference in the SGP. I consider these two amendments are administrative in nature and not amendments of a ground/s of opposition or to the facts and circumstances forming the basis of the grounds and therefore not amendments capable of consideration under reg 5.12. Likewise, the primary amendments to the header line and filing date of SGP are not amendments capable of consideration under reg 5.12. Any amendment to the SGP will be rectified and the SGP will retain the original filing date.
In regard to the further amendments that correct the priority dates of trade mark number 1536094 and the divisional application. I consider these amendments fall under reg 5.12(1)(a) as the priority dates are objectively ascertainable on the Register of Trade Marks and are correcting an error to the facts and circumstances forming the basis for the grounds. Again reg 5.12(3) does not apply to amendments under reg 5.12(1)(a) and therefore, under reg 15.12(2), I may grant the amendment if I think it is appropriate to do so.
In Richard McDonnell and Beaumont Management Services Pty Ltd v Karl Dawson,[4] Delegate Berger observed that the discretion to amend an SGP under s 5.12(1)(d) does not specify any factors which the Registrar must consider in order to determine whether it is appropriate to exercise the discretionary power to allow an amendment to the facts and circumstances forming the basis of a ground of opposition.[5] In K-Tec Inc v Healthy Foods LLC,[6] Delegate Richards noted:
The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.[7]
[4] [2023] ATMO 58.
[5] [2023] ATMO 58, [28] to [30].
[6] [2016] ATMO 4.
[7] Ibid, [23].

The above comments were made in the context of an amendment to add a new ground of opposition. However, I consider that these factors have relevance to other amendments to a SGP. The power to amend an SGP is discretionary and thus I may have regard to a range of factors in deciding if it is appropriate to allow an amendment.[8]
[8] [2023] ATMO 58, [29].
In Sun the Opponent provides a chronology of dates relevant to this matter as its delay of ten months in filling the request to amend to the SGP is at the heart of this matter. Notably the SGP was filed on 11 December 2022 and, amongst other grounds, a ground of opposition under ss 44 based on the Opponent’s trade mark number 2154215.
The request for the primary amendments to the SGP was filed on 17 January 2025 and included a request to replace all references of trade mark number 2154215 to 2421707 under the ss 42(b), 44, 58A and 60 grounds of opposition. Events related to the Opponent’s 2154215 and 2421707 trade mark applications follow:
- The Opponent filed the application for the registration of trade mark number 2154215 (parent application) for GOAT in classes 9, 25, 35, 38 and 42 on 8 February 2021 with a claimed convention priority date of 25 September 2020.[9]

On 19 January 2024 the Opponent filed a divisional application to the parent application. The divisional application was examined and on 30 January 2024 the Trade Marks Office (‘TMO’) issued an adverse report disallowing the claim for a divisional application because it did not claim some only of the goods in class 9 and did not meet the requirements of the Act.

Within one week, on 7 February 2024 the Opponent responded to the examination report and requested an amendment to the specification of goods in class 9 in the divisional application to correct an obvious mistake under s 65A. On 2 April 2024 the TMO issued notices to the Opponent that the details of the divisional application had been amended under s 65A and the amendment was advertised without objection.

On 6 March 2025 the Opponent telephoned the TMO and requested an examination report following the notice of amendment issued on 2 April 2024. On 13 March 2025 the TMO issued the second adverse report informing the Opponent that the amendment had fully resolved all issued raised in relation to the divisional status of the application.

[9] Convention number 1160191, New Zealand.

Sun declares that the reason why the Opponent’s amendments were proposed ten months after the parent application lapsed in March 2024 is that the parties were pursuing settlement discussions between their US counsel. The Opponent disrupted the opposition timeframe because of these discussions as follows:
- The Opponent filed a request for a cooling off period on 27 April 2023. On 1 May 2023 the TMO issued a notice allowing a six month cooling off period.

On 17 October 2023 the Opponent filed a request for an extension to the cooling-off period.

On 20 October 2023 the TMO issued a notice allowing the request for a further six months

On 26 April 2024 the parties filed a joint request for the suspension of the opposition proceedings. On 9 May 2024 the TMO issued a directive that the opposition be suspended, under the provisions of reg 5.19, from 29 April 2024 until 29 October 2024.

The Opponent filed unilateral request for an initial six-month halt (until 29 April 2025) to the opposition on 29 October 2024. The Opponent’s request was refused by the TMO on 29 January 2025, the suspension is terminated and the due date for filing evidence in support by the Opponent was set at 13 March 2025.

Sun states that the parties are not required to prepare and file evidence during cooling-off periods and suspensions, because it would be a waste of time and resources if the opposition does ultimately settle. Sun claims that for the same reason, the Opponent did not prepare and file an amended SGP.
Sun states that another reason the Opponent held off on seeking the amendments was because the status of the divisional application was uncertain until 13 March 2025. Sun attests that because of the likely termination of the suspension, the Opponent had no choice but to seek to add the divisional application to the SGP in January 2025 despite the outstanding objection, but the outstanding objection explains why the amendment was not sought earlier.
Sun claims that declining the amendments would materially narrow the facts and circumstances forming the basis of the grounds of opposition pursued under ss 42, 44, 58A and 60 and have a deleterious effect on the ability to properly test the registrability of the Trade Mark. Moreover, Sun claims that the amendments cause no prejudice to the Applicant. The Applicant has not yet put on its evidence or responded in any way to the to the SGP. From the date the opposition was filed, the Applicant has been on notice that it would be required to deal with an opposition based on the parent application. The divisional application is very similar except that it is narrower.
Furthermore, the Opponent submits that without the reference to the divisional application only half of the opposition would be heard and that might necessitate an appeal in order to have the same issues ventilated in relation to the divisional application. The Opponent considers that the nature of the request is to substitute, within the same grounds, some trade mark for a similar trade mark. The Opponent notes that its importance is that if the amendment to the SGP is not allowed, it would suffer significant prejudice, because it would be precluded from relying on the divisional application as a basis for its grounds of opposition.
In response the Applicant submits that it does not oppose an amendment that would remove reference to trade mark 2154215 from the SGP. The Applicant otherwise submits that the amendments should be disallowed. In particular, the Applicant argues that the amendments sought to be made to the grounds other than s 44 are misconceived as they could not rely on the divisional application.
The Applicant argues that the divisional application was filed on 19 January 2024 and the request for the primary amendments to the SGP was filed 17 January 2025 being filed a year after the divisional application was filed and after the parent application lapsed in March 2024. Moreover, the Opponent has made no proper attempt to explain the delay in seeking to amend the SGP.
The Applicant claims that it is prejudiced by the amendments in that it has, as it was entitled to assume that the opposition based on the parent application had been resolved after lapsing of that application. The Applicant submits that it is further prejudiced if the divisional application is substituted because this allows the Opponent to maintain an application as a citation notwithstanding concerns about its validity. Further, the Applicant submits that the Opponent is unable to show what, if any, real prejudice it would suffer if the amendments are refused. In particular, the Opponent is unable to show why the amendments would substantially change its prospects of success and therefore it cannot show that it would suffer any prejudice.
In my view, the amendment requests are premised on the basis that the Opponent’s divisional application was not in existence at the time of filing the SGP. With respect to the timing of the request for the primary amendments, the Opponent has not acted in a timely manner. The Opponent sought a s 65A amendment to the divisional application to make it valid which was allowed on 2 April 2024 and advertised without objection. It took nine months from this date for the Opponent to file the primary amendments. The Opponent’s reasons for the delay being that it was uncertain about the status of the divisional application until 13 March 2025, does not stand up, as it had informed the TMO in June 2024 of changes to the same divisional application in the matter of 1661, Inc. v G.O.A.T. Lifestyle Pty Ltd.[10] The other reason put forward by the Opponent for the delay in making the request was the cooling off periods and subsequent suspension to the opposition proceedings which ended on 29 October 2024, and followed by another request for suspension that was refused on 31 January 2025. Whilst the cooling-off and suspension periods brought forward by the Applicant do not excuse the uncertainty, it does explain why the request was not made in June 2024 or earlier as the opposition proceedings were temporarily paused/suspended and no formal filing were required by either party.
[10] [2024] ATMO 200 (Delegate Berger).
In this matter I am mindful of the important principle that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision.[11] To prevent that from occurring, without due consideration of the possible ramifications, could be to carelessly subject both Applicant and Opponent to the real possibilities of incurring considerable extra expense and experiencing further (and much longer) delays while they wrangle their unresolved dispute into the courts.
[11] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858 (Delegate Homann).
The Applicant claims that it would be prejudiced by the amendments as it was entitled to assume that the opposition based on the parent application had been resolved after the lapsing of that application. However, despite the lengthy time between the original SGP being filed and the amendment requests, the amendment requests were still made prior to the due date for the evidence in support and before evidence in answer was due.
I agree with the Applicant that the amendment to replace the parent application with the divisional application under s 42(b), 43 and 60 are futile as these are reputational based grounds. However, the first part to the primary amendments do not alter the basis of the s 44 ground as claimed with respect to the Opponent’s prior rights in its GOAT trade mark. The details of the parent application and the divisional application are the same except for a minor restriction in the class 9 goods of the divisional application. This restriction does not affect the dispute between the parties.
Having regard to all the relevant circumstances, I consider that it is appropriate to exercise my discretion under reg 5.12 to allow the requests to amend to the SGP as follows:
- replace all references of trade mark number 2154215 to 2421707 under the s 44 ground of opposition;
- to amend the priority date of trade mark number 1536094 for KID BY GOAT in class 25, to the priority date of 16 November 2012; and
- to amend the priority date of trade mark application number 2421707 for GOAT in classes 9, 25, 35, 38 and 42, to the convention priority date of 25 September 2020.

Decision

I am satisfied that the Opponent’s request to amend the SGP should be granted as per the amendments outlined at paragraph [29]. As required by reg 5.12(4) a copy of the amend SGP should be provided to the Applicant. The opposition should then proceed in accordance with Part 5 of the Regulations.

Costs

Both parties sought costs. As both parties have had some success in these proceeding, I decline to award costs under s 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

17 July 2025