We often get a variety of messages from clients and the public about Trade Marks. In this post we have decided to answer some of the more requested questions regarding amending a Trade Mark.
Can I amend my Trade Mark if I have filed an application with IP Australia?
Whether you can amend a Trade Mark filed with IP Australia depends on which stage your application is at. For example if the details of your Trade Mark have not yet been published then you may have an opportunity to request an amendment. If this is the case you should contact your Trade Mark Lawyer or IP Australia to request an amendment as soon as possible. The ordinary process is that IP Australia publishes details of an application the same day or one business day after it is filed. If you or your lawyer contacts IP Australia soon enough you may be able to delay publishing these details. If your Trade Mark has already been published then what can be amended becomes more limited.
What if I want to amend the owner which holds the Trade Mark
In a strictly technical sense you cannot amend who owns a Trade Mark once it has been filed. However, you can assign a Trade Mark to another person or company. In order to do this you will be required to lodge an application to IP Australia.
Can I amend my Trade Mark once it has been registered?
Amending a Trade Mark can fall into two categories. One being amendments to the aesthetics of the Trade Mark itself. The other being the administrative side of the Trade Mark.
IP Australia notes the aesthetics of the Trade Mark cannot be amended. Simply put anything which changes the “identity” of your Trade Mark will not be accepted. Even incremental changes will not be accepted if it changes the “identity” of your Trade Mark.
The second form of amendments can be classified as administrative changes such as to the details of your Trade Mark. However changes to the details of your Trade Mark are limited by IP Australia. Amendments which increases or extends the rights of the owner of the Trade Mark will not be accepted.
Can I amend my International registration of a Trade Mark?
If you have applied for international registration of your Trade Mark it cannot be amended if it has been registered with WIPO (World Intellectual Property Organisation). The rules are similar to IP Australia in that no substantial changes can be made to the Trade Mark. However you can change your name and address that is attached to the mark. Additionally you can also request to have a limit put on the classes that you applied for originally when registering your Trade Mark.
These answers are general in nature. If you wish to amend your Trade Mark it is always best to contact your Trade Mark lawyer or IP Australia. Our team of Trade Mark lawyers are always happy to assist whether you are amending a Trade Mark, applying for a Trade Mark or enforcing your Trade Mark rights. If you wish to get in touch please navigate to the “contact us” section or feel free to give our office a call on 02 9687 8885.