47.2. Request to amend a notice of intention to oppose or a statement of grounds and particulars

A notice of intention to oppose or a statement of grounds and particulars may be amended under the relevant provisions of regulations 5.11, 5.12, 17A.34F, 17A.34G.

2.1 Amendment to a notice of intention to oppose

A notice of intention to oppose may be amended to correct a clerical error or obvious mistake, or to record the name of another person if the opposition is to proceed under the name of that other person in terms of s 53 of the Act. The amendment may be granted by the Registrar ‘on terms that the Registrar considers appropriate’ (regs 5.11(3), 17A.34F(3)). If the delegate grants the request, a copy of the amended notice must be given to the trade mark applicant or IRDA holder.

Regulations 5.4 and 17A.31 do not apply to the amendment provision (regs 5.11(5), 17A.34F(5)). Therefore the delegate is not obliged to give the applicant or IRDA holder the opportunity to comment before granting the amendment request.

However, if the delegate believes that the amendment request should not be granted, the opponent will be given a ‘reasonable opportunity to be heard’ on the matter, under the provisions of s 203, before the decision is made.

2.2 Amendment to a statement of grounds and particulars

Under regs 5.12 and 17A.34G a statement of grounds and particulars may be amended 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.

An amendment to a statement of grounds and particulars may be made ‘on terms that the Registrar considers appropriate’. However, a request to amend a ground of opposition or add a new ground may only be granted if the Registrar is satisfied that the amendment or addition relates to information that the opponent could not reasonably have been aware of at the time they originally filed the statement.

Regulations 5.4 and 17A.31 apply to the amendment provision. Therefore, the delegate will give the other party an opportunity to comment before granting the request and the opponent will be given an opportunity to comment (or request to be heard) if the delegate intends to refuse the request.

Seeking amendment to a statement of grounds and particulars may attract a fee, depending on whether the amendment sought would take the number of grounds nominated, and/or the number of trade marks particularised under s 44/reg 4.15A above the threshold. Please see the discussion at 47.1.2.2 for an explanation of the thresholds.