Statement of Grounds and Particulars (SGP) – All you need to know

Author: Riet van den Ende, Progressive Legal

A trade mark opposition is a legal mechanism for interested parties to contest the registration of a trademark that they believe is invalid or infringes their rights. There are various stages involved in trade mark oppositions, but one of the most critical is that of the statement of grounds and particulars. If you want to learn more about where the statement of grounds and particulars fits into trade mark opposition proceedings, check out our page on Trademark Oppositions.

Whether you are filing a statement or responding to one, this is the page for you. We will be delving into the details and requirements of a Statement of Grounds and Particulars (SGP), and how it can significantly impact the outcome of a trademark opposition. 

What is a Statement of Grounds and Particulars (SGP)? 

The statement of grounds and particulars serves as the foundation of a trademark opposition. It is the document that sets out the opponent’s case and provides the legal reasoning behind their objection to a trademark registration or removal.

The statement plays a vital role in shaping the arguments, evidence, and legal framework for the opposition. It is crucial to complete this document thoroughly and correctly because it is in most cases impossible to add more grounds later.  

When should a Statement of Grounds and Particulars be filed? 

The statement of grounds and particulars must be filed within one month of filing the Notice of Intention to Oppose unless a time extension is obtained.  

Remember, you should not rely on time extensions because they may not be granted. It is up to the discretion of IP Australia to assess your case and decide if it is necessary or not. They also require an additional fee of $150.  

Why is a Statement of Grounds and Particulars important? 

One primary function of the statement of grounds and particulars is to ensure procedural fairness by giving the applicant a clear understanding of the case they need to defend against. It provides them with notice of the specific claims being made, giving them adequate time to prepare their arguments and gather relevant evidence. 

Additionally, the statement of grounds and particulars helps define the issues that the opposing party is required to address in their defense. The opponent’s case is confined to the matters raised in the statement. They cannot introduce new issues or arguments without amending the statement as per reg 5.12 of the Trade Marks Regulations 1995 (Cth). This ensures that both parties are aware of the scope of the dispute and prevents the use of unfair tactics. 

All evidence presented by the opponent in the upcoming proceedings should relate directly to the grounds in the statement of grounds and particulars. Any evidence not related to the proposed grounds may not be considered valid. 

It is important for both applicant and opponent to carefully consider the content of the statement of grounds and particulars. The applicant should provide sufficient and accurate information to support their case. The opponent should closely analyse the SGP to identify the specific issues they need to address in their defence. 

What are Grounds? 

A statement of grounds and particulars must clearly state the legal grounds on which the opposition is based. The opponent is limited to selecting from the list of grounds set out in the Australian Trade Marks Act 1995. These are the reasons why the trade mark should be rejected.  

Some of the most common grounds used to oppose a pending trade mark application are included in this table below: 

What are Particulars? 

The statement of grounds and particulars must include a corresponding statement of particulars under each ground of opposition. Writing particulars requires the opponent to provide specific details supporting their opposition. The particulars should be concise and presented in summary form, while still providing sufficient information. 

They should include relevant facts and legal arguments that demonstrate why the trademark should not be registered, or not be removed if the opposition relates to a removal application. This includes specific details, such as dates, events, names, and any relevant documents.  

A statement of grounds that is not supported by a statement of particulars is open to dismissal under reg 5.8. of the Trade Marks Regulations 1995 (Cth). 

What happens after I file a Statement of Grounds and Particulars? 

• If more information is required, the opponent will be notified, and they may add to the statement.   
• If there is still inadequate information to satisfy the requirements for a specific ground, then that ground and particulars will be deleted from the statement.   
• If the opponent does not satisfy any of their proposed grounds, the opposition will be dismissed.   
• If the opponent does satisfy any of their proposed grounds, the opposition will proceed. 

Key Takeaways

Navigating the trademark opposition process, including drafting or responding to the Statement of Grounds and Particulars, can be complex. Our highly skilled team of Trade Mark Lawyers possess the expertise to present a compelling statement. Do not hesitate to contact Progressive Legal by filling out the form on this page or giving us a call on 1800 820 083. 

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