At any stage after filing your trade mark application you may apply for an amendment.
What can be amended?
You can reduce the scope of the goods and/or services for which your trade mark is registered. For example, you can remove a class or delete some of the goods and/or services.
You can’t increase the scope after registration. This is because such an expansion has the ability to affect the basis on which your right was approved and therefore other traders’ rights.
Other minor changes that do not substantially affect the identity of your trade mark may be possible.
Amendments that can be made over the phone
Some very minor amendments can be made by phone. These include:
- an obvious typographical error or minor clerical mistake
- changes to a convention application number in relation to a priority claim
- a typographical error in the address for service
- minor typographical changes to other endorsements.
Amendments that must be made in writing
Other than the exceptions listed above, amendments must be made in writing by the applicant or the applicant’s agent. This can be done through our online services. Examples include:
- changes to the name of the applicant
- changes to the address of the applicant
- changes to the address for service
- changes to the representation of the trade mark
- deleting goods and services
- transferring a class of goods and services
- adding or changing endorsements (other than translation endorsements)
- translation endorsements of non-English words and non-Roman characters.
Criteria for amendments
All amendments need to be carefully considered by the Registrar before they are granted in order to lessen the potential adverse impact on other parties. This is because trade mark applications are published (as a ‘pending application’) in the Australian trade mark search shortly after they are filed. The database is publicly available and can be searched online by anyone.
Consequently, there are some provisions and conditions that need to be met if you want to make an amendment to your trade mark application. These are outlined below.
Fair and reasonable
The Registrar will only consider the request if it is fair and reasonable. For example, if you make a request a long time after filing your application it might not be allowed.
The Registrar may also require you to file a declaration in support of your request, and will conduct a search of the Australian trade mark search database for trade marks that might become conflicting because of the proposed changes to your trade mark.
Advertising and oppositions
Some amendments need to be advertised in the Australian Official Journal of Trade Marks to allow for opposition before being approved. Advertising the amendment provides other people with an opportunity to object to the amendment if they feel that the change will affect them.
The amendment will be approved if no opposition has been filed. Any opposition will follow the usual procedures for opposition.
Extensions of time for opposition
If your amendment is opposed you may need to apply for an extension of time while the opposition process takes place. Your application is not automatically deferred when you apply for an amendment (or if anyone opposes your amendment).
Supporting documentation is not usually necessary. However, we may request it if there is doubt about the validity of the request.
For example, we may request documentation where the change of the owner's name and address also involves the legal transfer of ownership of the trade mark. In that case an assignment of ownership of the trade mark application or registration will need to be lodged.
Timing of amendments
The rules for making amendments to your trade mark application vary, depending on the nature of those amendments and when you wish to make them.
Some amendments are also time critical and you need to act upon them promptly.
Your application is published at the time of filing. There may be scope to amend a trade mark after it has been published if that amendment does not substantially affect the identity of the trade mark, or the amendment is to correct a clerical error or obvious mistake in the application.
Requests to narrow the scope of your goods or services are usually acceptable. Requests to expand the scope of your application, such as adding new classes, adding new items to existing classes or amendments to the representation of your trade mark will only be considered if they are to correct a clerical error or obvious mistake made when filing the application.
Amendment requests must be submitted in writing and will be considered by a delegate of the Registrar. You will need to provide reasons as to why your request should be granted. In some cases a declaration may be required. These amendments may need to be advertised for opposition.
Amendments after registration
Amendments after registration can include:
- correction of an office error
- future reclassification of goods or services
- change to the registered trade mark as published (provided it does not affect the identity of the trade mark)
- changes to the details as long as the changes don’t extend the rights
- changes to the certificate of registration after an amendment has been made.
As with amendments prior to examination or acceptance, requests must be submitted in writing and will be considered by a delegate of the Registrar.
A divisional application is a second application based on the parent application (first application). This means that you will have two trade mark applications with the same trade mark and the same priority date as the parent application (provided that all relevant criteria are met).
Purpose of a divisional application
During the examination of your application the examiner may raise objections to the registration of your trade mark.
To overcome the objections, you might be able to divide your application to allow the trade mark to proceed for a limited sub-set of the goods or services claimed in the earlier application. Meanwhile you are still able to progress your pending application, with the remaining goods and services.
If you file a divisional application it will have the priority date of your parent application.
Goods and services for your divisional application
A divisional application can only be filed for some of the goods and/or services covered by the parent application. You cannot add new goods and/or services to the divisional application. When you file your divisional application you must also specify the goods and/or services that are to remain in the parent application.
You do not need to change the goods and/or services in the parent application when you file the divisional. The registrar will change the statement of goods and/or services of the parent application after receiving the divisional application.
Lapsed parent application
You need to make sure your parent application is still pending at the time you file the divisional application. Applying for a divisional application is not the same as refiling an application.
If your parent application lapses the registrar won’t be able to change the statement of goods and/or services.
Divisional of a divisional
You may also be able to divide your application even further, by putting in a divisional application from a divisional application.