Although applying for an international trade mark may seem daunting, you’ll be relieved to know that you can still make certain last-minute changes to your filed application. This article sets out how to make these changes to your international trade mark application.

Changing the Owner’s Name or Address

If you have submitted an application through the Madrid Protocol, you can request to change your name and/or address. This is done by completing and submitting WIPO’s MM9 form. To do this, you must pay the required fees.

Keeping your address updated is particularly important to ensure that you receive any crucial correspondence regarding your international trade mark.

Changing the Owner Fully or Partially

You may want to change the owner of your trade mark for all nominated countries and all goods or services. If so, the new owner of the international trade mark must meet the same eligibility requirements as the original application, meaning that they must:

  1. live in a member country;
  2. be a national of a member country; or
  3. have a real commercial or industrial establishment in a member country.

If you wish, you are also able to change the owner of your trade mark for only some of the nominated countries. For example, you may want to change ownership for only two out of five of the nominated countries. In this circumstance, the new owners will receive separate International Registration Numbers.

To change ownership fully or partially, you must complete and submit WIPO’s MM5 form and pay the required fees.

Limiting the List of Goods and Services

Similar to an Australian trade mark application, you can limit the list of goods and services for your nominated countries. However, you cannot increase this list after you have filed the application. This limitation ensures that someone cannot unfairly affect another person’s ability to register a trade mark.

If you wish, you can remove an entire class of goods and services. However, you are also able to delete just some of the goods and services under a particular class.

For example, if you registered your international trade mark under class 25, being ‘clothing, footwear, headgear’, you can limit this to just ‘clothing and footwear’.

It is important to note that it is possible for the limited goods and services to be the subject of what is known as a ‘subsequent designation’. This typically refers to the extension of your trade mark protection to additional countries. If your limitation does fall within this category, you may be charged additional fees when your trade mark renewal is due.

You can request to limit the list of goods and services by completing and submitting WIPO’s MM6 form with the required fees.

Removing One or More Nominated Countries

You may decided that having trade mark protection in one particular country is no longer appropriate for your business plans. If so, you can request to remove one or more of the nominated countries from your trade mark application. 

To remove one or more nominated countries, you will need to complete and submit WIPO’s MM7 form with the required fees.

Cancelling Your International Registration Fully or Partially

It is also possible to fully cancel your international trade mark application or registration in all of the nominated countries and all the goods and services. Alternatively, you can request to cancel some of the goods and services for all the nominated countries (i.e. partial cancellation).

After cancellation, these goods and services are permanently removed from the International Register. They cannot be the subject of a subsequent designation. Therefore, they are not considered in the calculation of the supplementary fees when renewal is due.

To cancel your international trade mark application fully or partially, you will need to complete and submit WIPO’s MM8 form with the required fees.

Key Takeaways

It is possible to amend your international trade mark application after it has been filed or registered. Some of the changes that you can make include:

  • changing the owner’s name and/or address;
  • changing the owner fully or partially;
  • limiting the list of goods and services;
  • removing one or more nominated countries; and
  • cancelling international registration fully or partially.

If you want to make any of the above changes to your application, you will need to complete and submit the relevant WIPO form and pay the required fees. If you have any questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Graci Chen
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