Trademarks are a valuable marketing tool to promote and protect your brand. In short, a trademark can refer to any feature or combination of features that will distinguish your brand, product or services from your competitors. For example, the famous golden arches sign helps McDonald’s distinguish themselves from their competitors. Therefore, it is pivotal that your registered trademark is accurate and up to date to reflect any changes in your brand.
For more information on the benefits of registering a trademark, please check our article.
The Designs Act 2003 (Cth) permits very limited amendments to your trademark design after registration. In addition, the amendment process can only be initiated by submitting a request to amend the registered trademark.
Reasons For Changes
Some of the common reasons for amending a trademark include:
- Rectify an error on the trademark.
- Change in circumstances of the trademark registration. For instance, a change in address after the trademark has been registered.
- Update details to ensure they comply with the Trade Mark Act 1995 (Cth).
- Reduce the scope of the goods and services for which your trademark is applicable. On the other hand, the scope of the goods and services can rarely be increased through an amendment. In doing so, the application to increase scope undermines the initial trademark application and approval. In addition, this application will also infringe on other traders’ rights.
Application For Amendments
Applications are submitted either in writing or over the phone. The mode of request submission depends on the severity of the changes.
Verbal amendment requests
You can submit your request for minor changes over the phone. For example:
- A typographical or clerical mistake
- A misprint in the address for service
- Minor typographical changes to other endorsements
- Changes to a convention application number regarding a priority claim
Written amendment requests
Any other type of amendment requests must be submitted in writing. For instance, the following requests must be submitted in writing:
- Changes to the name and address of the applicant
- Changes to the address for the service
- Deleting the good and services to which the trademark is applicable
- Transferring a class of goods and services
- Adding or changing endorsements
- Changes to the representation of the trademark
Furthermore, written requests for amendment involves submitting appropriate forms available on IP Australia.
Criteria For Amendments
Fair & Reasonable
Any application for amendment will be examined by the Registrar who is responsible for ensuring your application to amend is fair and reasonable. Consequently, this ensures that your request to amend does not adversely impact other parties involved.
Advertising and Opposition
If the Registrar deems your application to be fair and reasonable, the application will be published in the Australian Official Journal of Trademarks. This allows any third parties to object to the amendment if they believe the proposed changes conflicts or infringes on their trademark. If the application receives zero objections following the publication, the request will then be subject to any other considerations made by the Registrar. For instance, if the application for amendment was submitted months after the trademark registration, the Registrar can deem the time period taken to be excessive and deny the requested amendments.
Extension of time for Opposition
You are also responsible for applying for an extension of time if your request to amend has been declined.
In conclusion, you have a scope to amend your registered trademark if the proposed amendment does not substantially affect the identity of the trademark or the new changes does not extend the rights initially granted to the trademark.
For more information about registering a trademark or amending an existing trademark, please get in touch with one of our trademark lawyers.
