When Dr. Elizabeth Kirk, Beyond Ergo decided to rebrand her specialised ergonomic business, she consulted with Binh Rey for assistance with trademarking her new name. What she discovered was that her chosen name wasn’t an ideal representation of her business, and rebranding was more involved than simply choosing a new name.
Amending your trade mark application
A trade mark owner can request to have several details of their trade mark amended at any point after filing the trade mark application. Trade marks can be amended before or after registration, but only under certain conditions. Amendments that can be rectified over a phone call includes minor spelling errors, revisions of convention application numbers with respect to a priority claim and clerical errors in the address for service.
Other more complicated revisions have to be done in writing through the online services section of IP Australia. Examples of these revisions include changes in the owner’s names and details, changes in the representation of the trade mark, deletion of classes of goods and services, addition or changing 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 not bestow extended rights and coverage if granted. 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 very specific situations.
Once the mark has been published, changes that can 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 does not affect other people’s rights. Thus, classes of goods and services cannot be added, as this would grant the trade mark applicant extended rights. In addition, certain 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 also decide to reduce the number of classes of goods and services in the registration in order to avoid non-use disputes. Reducing the number of classes will also decrease trade mark renewal costs, which depend on the number of classes specified on the registration. Your trade mark attorney can file any permissible amendments through IP Australia.