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 in the Trade Marks database (ATMOSS), it is possible to request amendment to correct a clerical error or an obvious mistake. Particulars of an application are considered published when the details of the application are available on ATMOSS.
The timeframe for an amendment before publication is very limited as details of an application are published on the same day as filed or within one business day. If after filing your application you need to correct any particulars of the application because of a clerical error or obvious mistake, you should search for your Trade Mark number in ATMOSS to see whether the application has been published. If it has not been published, you should contact us without delay. Initially you can notify us by phone, but this must be followed up immediately by filing an amendment request through eServices. Once you contact us we can only hold off publishing your application for up to one day, after which time it will be published as originally filed. If your application has been published see Amendments after publication.
Amendments after publication
If the particulars of an application have been published in the Trade Marks database (ATMOSS), it may still be possible to amend the application.
Amendments, such as minor changes to the representation that do not substantially affect the identity of the trade mark may be possible, but it would be 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.
An amendment to correct a clerical error or an obvious mistake after publication are possible, if the Registrar is satisfied that it is fair and reasonable to make the amendment. In some instances the Registrar may require a declaration to be filed. These types of amendments must be advertised in the Australian Official Journal of Trade Marks to give other parties an opportunity to oppose the amendment.
All requests to amend a trade mark application/registration must be lodged through eServices. Some minor amendments may be able to be made over the phone.
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.
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.
Other document that show 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:
- Full name and address of all parties/companies (old owner and new owner)
- 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: 09/9/2014