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.
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:
Once a mark has been registered, the Trade Marks office will allow amendments of the following nature only:
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.
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.
The existence of brands in the marketplace which are similar to your trade mark may confuse or mislead consumers that the goods and services of the brands are of the same source. It also dilutes the exclusivity of your trade mark right. You can prevent such incidents from happening by monitoring your trade marks.
Zig Zag Hub, a coworking space in Wollongong NSW, wins against a trade mark opposition despite the number of grounds raised by the opponent. Find out how we did it and why it’s worth defending your trade mark application.
It’s World IP day! A reminder that a robust IP position can make the world go round. Also a reminder to review your IP position to look at how you can augment or strengthen that position so you can better leverage it.
Know the steps you need to take in order to secure protection for your business and/or brand for its long-term success.
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