7.7.2.3 Reasons for Dismissal

Also in this Chapter:

• 7.7.2.1 Requests for Dismissal
• 7.7.2.2 Dismissal on the Initiative of the Commissioner

Note: This information applies to oppositions commenced before, on or after 15 April 2013.

In determining whether an opposition should be dismissed, the Commissioner will assess whether there exists a “reasonable prospect of success”. This test is set out in Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 at [18]:

• An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed.  An opposition may be dismissed if it is considered to have no reasonable prospects of success.   
• In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than a fanciful issue to be decided.  The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident.  This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.   
• A dismissal will generally be inappropriate where expert evidence is required to determine an issue.  However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
• Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success.  However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed.  If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.   
• Care must be taken not to cause an injustice to a party by dismissing an opposition.   

The assessment is to be made after consideration of the statement of grounds and particulars which will identify the material facts necessary for the particular grounds of opposition (Mobay Corporation v The Dow Chemical Company [1992] APO 25).  This approach was accepted by the Administrative Appeals Tribunal in Preference Manufacturing (Aust) Pty Ltd and Commissioner of Taxation and Breezway Australia (Holdings) Pty Ltd (Joined Party) [2012] AATA 393.