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...

This matter concerned an application by 1661, Inc. (the Opponent) to amend its statement of grounds and particulars in opposition to the registration of the trade mark application number 2157337, GOAT CREW, in the name of TF... The decision was made by Louise Tuohy, acting as delegate for the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the proposed amendments to the Opponent's grounds and particulars of opposition should be permitted. Specifically, the Opponent sought to introduce new grounds of opposition, including those based on sections 41 and 43 of the *Trade Marks Act 1995* (Cth), and to expand upon existing grounds. The delegate was required to consider the principles governing amendments to pleadings in trade mark opposition proceedings, particularly in light of the stage of the proceedings and the potential prejudice to the Applicant.

The delegate applied the established principles for allowing amendments, which generally favour liberality provided the amendments do not introduce entirely new cases or cause unfair prejudice. The delegate noted that amendments are typically permitted to clarify or elaborate on existing grounds, or to introduce new grounds if they arise from the facts already pleaded and do not fundamentally alter the nature of the opposition. In this instance, the delegate found that some of the proposed amendments, particularly those relating to sections 41 and 43, sought to introduce new factual bases and arguments that were not foreshadowed in the original opposition. The delegate considered the potential prejudice to the Applicant, who had already filed evidence in response to the original grounds.

The delegate ordered that the Opponent's request to amend be allowed in part. Amendments that clarified or elaborated on existing grounds were permitted. However, the proposed introduction of new grounds, such as those under sections 41 and 43, which introduced new factual allegations and arguments not present in the original statement, were disallowed on the basis that they would cause unfair prejudice to the Applicant and fundamentally alter the nature of the opposition.