Generally, when you apply to register your trade mark, you have confirmed and described its details. However, there may be circumstances in which you need to make changes to your trade mark application once you have filed it. In this case, you can request certain changes if you apply to record the change in the application or registration. This article will explain what types of changes are available as well as how you can amend your trade mark application.
What Are Permissible Amendments?
Before proceeding with any amendments, it is necessary to assess whether your proposed change is allowed. This may vary depending on whether the amendment is sought prior to or post-registration.
IP Australia, Australia’s trade mark authority, considers requests to broaden an application’s scope only under specific circumstances. These may include rectifying clerical errors or correcting obvious mistakes from the initial application. Alternatively, you have the option to limit the scope by reducing the range of goods and services initially applied for.
Before IP Australia publishes your trade mark, it is possible to amend the details, or particulars, of an application. However, amendments to particulars are minimal and may apply only to particular situations.
Can I Make 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 for.
Continue reading this article below the formWhat Changes Can I Make to a Trade Mark Application?
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;
- one or more trade marks by removing them from a series of applications;
- the applied classes of goods and services if they need to be corrected; and
- an endorsement.
You can make changes by either phone or in writing. Often you may be able to make minor changes to your trade mark application over the phone. These types of changes include minor typographical mistakes, translation errors or changes to a convention application number for a priority claim.
However, more substantial changes will need to be addressed through writing, and can include:
- adding or deleting the goods and services to which the trade mark relates;
- adding or transferring a class of goods and services;
- changing your name and address;
- adding or changing endorsements;
- amending the address for service; and
- adjusting the representation of the trade mark.
To make an amendment in writing, there may be specific forms you need to fill out and submit. Ensure you search on IP Australia for the relevant documents you must complete to ensure your amendment is processed.
Under What Circumstances Can an Amendment Be Made?
Importantly, whether your request to amend a trade mark can proceed depends on the circumstances in which it was made. Certain amendments can only be made at a specific point in the application process, such as:
- before the application is published;
- after an application is published; and
- after trade mark registration.
Furthermore, the Registrar must consider if your request to amend is fair and reasonable. They must also balance the need for your amendment against any adverse effects it may cause for other parties.
If your trade mark application is amended, the change will usually be published in the Australian Official Journal of Trade Marks. This is to alert third parties who may oppose the amendment before IP Australia approves it. If there is no opposition, then your amendment will be approved subject to the other considerations the Registrar may account for. For example, the Registrar may note the time taken to request a change. If you apply to amend weeks after the trade mark is filed, the Registrar may consider this time period too long and deny the proposed amendments.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
You may contemplate modifying your trade mark application for several purposes, which can include minor clerical errors or personal details on the application. Depending on the significance of the change, you may need to file the change request in writing. Furthermore, you should be aware of the stage at which you are requesting the change, as certain amendments are only available at specific stages in the application process. Finally, IP Australia will generally not approve requests for amendments that will broaden the scope of the trade mark’s protection. However, amendments that reduce or narrow the scope of a trade mark are generally acceptable.
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
IP Australia may consider a request to broaden your application’s scope only in cases where the amendment is necessary because of a clerical error or an evident mistake during the application process. Otherwise, it is usually only possible to reduce or narrow the range of classes and goods and services you initially applied for.
You can submit a request to amend your application either before or after registration, depending on the type of amendment.
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