FOR IP PROFESSIONALS

Types of amendments

The rules for making amendments to your trade mark application vary depending on whether you make them before or after the details of your application have been published.

Amendments before publication

If the particulars of an application have not yet been published, it is possible to request amendment of the particulars contained in the application form to correct a clerical error or an obvious mistake.

These types of amendments are limited, as details of the application are usually published within one to two working days of filing and sometimes on the same day.

You would need to contact us without delay for such an amendment to be considered. Initially you can notify us by phone, but the request would need to be in writing and should be followed up by a fax or email immediately.We will only hold your application for up to one day, after which time it will be processed and published as originally filed.

The amendment request should:

  • include a pre-filing number (for electronic applications)
  • include the applicant name, trade mark and classes (for paper applications)
  • include the required fee if you are adding extra classes of goods and services
  • identify what amendments are being requested and may be accompanied by a substitute application form with the proposed amendments made on it.

Amendments after publication

If the particulars of an application have been published, it may still be possible to amend the application.

A request for amendment after publication should be in writing and include the trade mark number and nature of the amendment being requested.

Only minor changes to the representation of the trade mark are possible and it is difficult to add extra classes or goods and services that would extend the scope of the application as originally filed. All amendments of this nature must be considered by a trade mark examiner to determine whether or not the amendment would be allowed.

An amendment which reduces the scope of the trade mark application as applied for e.g. removing a class or deleting some of the goods or services, may be allowed.

Some minor amendments may be able to be made over the phone.

You may also request to amend an application to correct a clerical error or an obvious mistake after publication. This part of the Act provides the Registrar with more scope, when it is fair and reasonable to correct clerical errors or obvious mistakes in published applications not allowable under other parts of the Act. If the Registrar is satisfied that the request for amendment would be granted, it must be advertised in the Australian Official Journal of Trade Marks to give other parties an opportunity to oppose the amendment.

Amendments after registration

Amendments after registration can include:

  • correction of an office error
  • future reclassification of goods or services
  • amendment to the registered trade mark as published (provided it does not affect the identity of the trade mark)
  • amendment to the goods and/or services covered by the registration or any other particulars of the registration, provided that such amendments do not extend the rights the owner of the trade mark has in the registration.
  • amendments to the certificate of registration, after an amendment has been made to the registered particulars of a trade mark.

Other amendments

Changes of name, address and address for service

Notification in writing must be provided to the Registrar for a change to a name, address or address for service of a registered owner, or of a person recorded as claiming an interest in or right in respect of a trade mark.

Correspondence from us is sent to the current address for service on the Trade Marks Database (ATMOSS) and includes notices and reminders in relation to your trade mark. It is very important that you advise us whenever you change the address for service to ensure that you receive all correspondence relating to your trade mark.

Supporting documentation is not usually necessary, although the Registrar may request it if there is doubt about the validity of the request. This may be important in cases where the change of the owner's name and address involves the legal transfer of ownership of the trade mark. An assignment of ownership of the trade mark application or registration will need to be lodged.

Assignment or Transmission of Ownership of a Trade Mark

What is an Assignment?

A trade mark owner may assign the ownership rights of a trade mark to another party (individual or company).
An assignment or transmission may be full or partial, that is, in respect of all or only some of the goods and/or services of the trade mark.

In order to assign or transmit the ownership or interest of a trade mark you must advise the Registrar of trade marks in writing by completing an Application to record assignment or transmission of a trade mark" form.

You must clearly identify the trade mark number(s) being assigned and supply documentary evidence of proof of title. This evidence can be in the form of :

A letter from the assignor (previous owner) requesting transfer of the trade mark(s) to the assignee (new owner). The letter must be dated and include the signature of the assignor.

OR

Other document showing Proof of Title to the Trade Mark, such as a Deed of Assignment, Merger Document, Witnessed Declaration or probate document.

The following information must be included in any of the above forms of evidence:

  • Date
  • Full name and address of all parties/companies (old owner and new owner)
  • Signatures
  • When signing for companies without a company seal, include position in the company (eg. director)
  • Trade mark number(s) being transferred

Note: If there is more than one owner to the trade mark being assigned, all owners must sign the transfer document.

Last Updated: 23/11/2013

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Bachelor of Information Technology

Acting Director of Audits
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