Background
Bickford’s Australia Pty Ltd and Noot Drinks Co Pty Ltd were involved in trade-mark proceedings concerning the mark “Spritz.” Noot, as cross-claimant, applied to amend its statement of cross-claim one month before the trial was due to begin.
The proposed amendment sought to invoke s 58 of the Trade Marks Act 1995 (Cth), alleging that Bickford’s was not the owner of the “Spritz” trade mark. Noot said the allegation was an alternative to its primary case that “Spritz” had descriptive significance, relying on a 1979 advertisement.
The Court’s Holding
Justice O’Sullivan dismissed Noot’s interlocutory application and refused leave to amend the cross-claim. The Court was not satisfied that Bickford’s would avoid prejudice in preparing for trial if the late amendment were allowed.
The Court accepted that Noot had provided explanations for the delay, although they were somewhat inconsistent. But Noot conceded that the point could have been raised earlier, and the Court found the explanation insufficient to justify exercising its discretion in Noot’s favour. Noot was ordered to pay Bickford’s costs of the application.
Key Takeaways
- A proposed trade-mark ownership challenge raised shortly before trial may be refused where it would prejudice the opposing party’s trial preparation.
- Characterising an amendment as an alternative or converse to an existing case does not remove the need to address its distinct factual consequences.
- A party seeking a late pleading amendment must provide a sufficient explanation for the delay.
Why It Matters
The decision is a practical reminder that trade-mark challenges under s 58 must be pleaded promptly. Even where a proposed case overlaps with an existing descriptive-use argument, a late ownership allegation can require further factual investigation and preparation by the registered owner.