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Amending your Trade Mark Application

An application owner can request to have some of the details of their trade mark amended at any point after filing at trade mark application and can be post registration.

Some changes can be rectified over the phone call including minor spelling errors, revisions of convention application numbers with respect to a priority claim and errors in the address for service.

More complex revisions must be made in writing through the online services section of provived by IP Australia.For example changes in the owner's names and details, changes in the representation of the trade mark, deletion of classes of goods and services,the addition or amendment to endorsements, as well as non-English and non-Roman translation endorsements.

Amendment of trade mark application prior to registration

Changes can be made to the application as long as the amendment would extend the rights and therefore coverage granted by the trade mark once registered. It is possible for the particulars of an application to be amended before the application is published, but these are extremely limited and may apply only in very specific situations.

Once the mark has reached the publication stage the changes that may be made include:

  • changes to the name and address of the applicant;
  • changes to the address for service;
  • changes to the representation of the mark;
  • one or more trade marks from the application may be removed (in the case of a “series” application);
  • classes of goods and services may be corrected; and/or
  • adding or changing endorsements.

Amendments after registration

Once a mark has been registered, the Trade Marks office will allow amendments of the following nature only:

  • correcting an office error;
  • revisions in the registered mark (as long as the identity of the trade mark as published is unchanged);
  • changes in the trade mark owner's details; and/or
  • changes in the address for service

In general, amendments need to be considered by the Registrar and will be granted if the Registrar considers the request is fair and reasonable and will not negatively impact the rights of others. As such classes of goods and services, or further extending terms, cannot be added, as this would grant the trade mark applicant extended rights to those initially filed.

Where further products or services need to be added to a trade mark registration to extend the rights to the trade mark beyond those initially filed for a further application can be filed. This application, once registered, can be ‘merged’ with the pre-exisiting rights.

Allowable Allowable amendments may have to be advertised in the Australian Official Journal of Trade Marks so that any third party can oppose the amendment in case the proposed revisions to the trade mark are in conflict with their own intellectual property rights.

Amendments prior to renewal

Prior to renewal, the trade mark registration can be amended. For example, the name(s) and/or address(es) of the applicant may change. Appropriate assignments of rights must be in place. You may decide to reduce the number of classes of goods and services or the terms within a class in the registration in order to avoid non-use disputes with new applicants hoping to file for your unused terms. Reducing the number of classes in a trade mark registration decreases the trade mark renewal costs, which are charged per class. Your trade mark attorney can file any permissible amendments through IP Australia.

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