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You can change your trade mark after you file a trade mark application if you apply to record the change in the application or registration.

For more information on the benefits of registration please see our article.

You may need to amend your trade mark for a variety of reasons including the following:

  • there is an error in the trade mark that requires rectification;
  • you have experienced a change in circumstances and need to record a change of name or address; or
  • there are details in the documents that need to be amended to comply with the Trade Marks Act 1995.

Making Amendments to a Trade Mark Application

Amendments may be made either by phone or in writing. Often you may be able to make minor changes to your trade mark application over the phone while more substantial changes will need to be addressed through writing.

Amendments that can be made over the phone include minor typographical mistakes, translation errors or changes to a convention application number regarding a priority claim.

Amendments that must be made in writing include:

  • Adding or deleting the goods and services to which the trade mark relates
  • Adding or transferring a class of goods and services
  • Changes to the name and address of the applicant
  • Adding or changing endorsements
  • Changes to the address for service
  • Changes to the representation of the trade mark

Under What Circumstances Can an Amendment Be Made?

There are other factors to consider, to determine whether an application to amend a trade mark may be allowed to proceed.

Certain amendments can be made before an application is published.  Different amendments can be made after an application is published. These are different again to the amendments that can be made after the trade mark has been.

The Registrar must consider whether or not your application to amend is fair and reasonable.  The Registrar must also balance the need for your amendment against any adverse affects that this amendment may cause for other parties. It is recommended that you conduct a search of the Australian Trade Mark Online Service System to see whether or not any amendments that you propose to make will conflict with the interests of other parties.

If there your amended trade mark may conflict with another party’s trade mark, then it is unlikely that the Registrar will allow the trade mark amendment to proceed.

It is usual practice for any amendments to a trade mark application to be published in the Australian Official Journal of Trade Marks. This is to alert third parties, who may oppose the amendment before it is approved. If no opposition is made, then the amendment will be approved, subject to the other considerations to be made by the Registrar.  These include time taken – if the application to amend the trade mark is made weeks after the trade mark is filed the Registrar may consider this time period too long and deny the proposed amendments.

More information on what happens when a trade mark is opposed can be found here.

Filling Out The Forms

If you require an amendment to be made to a trade mark application which cannot be done over the phone, there are forms to be filled out and submitted so you can apply in writing to amend your trade mark.

The forms to apply for amendment can be accessed on the IP Australia website.

Conclusion

For more information about trademarks and intellectual property, please see: http://www.ipaustralia.gov.au/ or call LegalVision to get in touch with one of our trademark specialists.

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