Points To Consider When Amending Your Trade Mark Application

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Table of Contents

• What Types of Amendments Are Permissible?
• How Do I Make The Amendment?
• Can Anyone Oppose My Amendment?
• Key Takeaways
• Frequently Asked Questions

If you own intellectual property (IP), it can be beneficial to know how to amend your trade mark application. For instance, you might make an error in your application or experience a change in circumstances and need to change your application accordingly. However, there are a few points to consider when amending your application. Namely, IP Australia will not automatically accept all amendments. This article will discuss some points you should consider if you are considering amending your trade mark application.

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What Types of Amendments Are Permissible?

One of the first points you should consider is whether the amendment you wish to make is permissible. This can depend on whether you are making the amendment before or after registration. 

Amendments Prior to Registration

Say you are thinking of amending your trade mark application before registration but after filing it with IP Australia. In this instance, your changes cannot bestow additional rights than what you have already applied. 

In saying that, IP Australia will only consider a request to expand the scope of your application if you want to amend it as a result of a clerical error or an obvious mistake made when applying. Alternatively, you can reduce the scope of the goods and services you applied for.

Before IP Australia publishes your trade mark, it is possible to amend the particulars of an application. However, amendments to particulars are minimal and may apply only to particular situations.

Once IP Australia publishes your trade mark, the amendments you can make include changing:

• your name and address;
• the address for service;
• the representation of your trade mark;
• removing one or more trademarks from a series of applications;
• classes of goods and services if they need to be corrected; and
• an endorsement.

Amendments After Registration

Once IP Australia registers your trade mark, you can amend your registration by:

• correcting an office error;
• making a slight revision to the registered mark as long as the nature of the published trade mark remains unchanged;
• changing your details as the trade mark owner; and
• changing the address for service

How Do I Make The Amendment?

You must make all amendments through IP Australia. You can request the amendment or have a lawyer request it on your behalf.

You can make minor amendments by contacting IP Australia via phone. These include amendments for:

• a clerical mistake;
• changes to a convention application number concerning a priority claim; and
• a typographical error in the address for service or an endorsement.

Moreover, it would help if you made all other amendments in writing. These amendments include changing:

• your name and address;
• the representation of the trade mark;
• the class of goods and services by deleting some;
• transferring a class of goods and services; and
• endorsements (other than translation endorsements).

Above all, you will need to provide reasons why your request should be granted.

Can Anyone Oppose My Amendment?

Since IP Australia must advertise most amendments to trade mark applications, you can be exposed to objections from third parties who believe the amendments will affect them. As a result, you may defend the opposition if you receive a notice of intention to oppose and the statement of grounds and particulars. Your notice must file your defence within one month of receiving a copy of the statement of grounds.

If you miss the one-month window to file your defence, you could request an extension to file your intention to defend and pay the relevant fee. If you file a notice of intention to defend, the next step in the opposition process is evidence. A decision on the opposition will be made once the evidence stages are complete.

Key Takeaways

You might be thinking of amending your trade mark application for various reasons. For example, you can request an amendment with IP Australia to change:

• minor clerical errors;
• your name or address;
• the classes of goods and services you included in your application.

However, IP Australia is likely to only accept your request for an amendment if you attempt to expand your protection by including additional classes. Instead, you should only amend your application by reducing or refining the classes you have already included in your application. 

If you need help lodging a request for an amendment, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions