Amalgamation (Linking) of Trade Mark Applications

When businesses evolve, consolidate, or simply try to reduce administrative burdens, the trade marks they hold often need to evolve too. One useful administrative tool available in Australia is the amalgamation or “linking” of trade marks.

What Is Trade Mark Amalgamation?

Trade mark amalgamation, also referred to as “linking” is the process of treating multiple individual trade mark registrations as one single registration for administrative purposes. It doesn’t change the scope of your protection but streamlines how your marks are managed and referenced by IP Australia. This mechanism is only available under certain circumstances. It generally applies to older registrations, especially those made before 1 January 1996 (under the pre-1995 Trade Marks Act), and to series marks filed prior to 27 March 2007.

Why Consider Linking Trade Marks?

Here are some practical reasons trade mark owners choose to amalgamate their marks-

• Instead of tracking multiple registration numbers, you only manage a single “parent” registration.
• All correspondence, endorsements, and renewals are recorded under one registration number.
• Reduces the chance of missing deadlines or duplicating efforts across similar registrations.

Linking doesn’t create a new trade mark, it merely consolidates the administration of existing rights that meet specific eligibility criteria.

Types of Linking Available

There are two main categories under which trade mark amalgamation can occur-

Linking Pre-1996 Identical Trade Marks under Section 239A –

This section applies to trade mark registrations that meet the following criteria-

• The marks are identical.
• They were registered before 1 January 1996.
• They cover different classes of goods or services.
• All applications were lodged on the same day.
• They are owned by the same registered owner.
• The registrations are in the same part of the Register (i.e., have the same legal status).

If these conditions are met, the owner can request for the marks to be linked into a single trade mark registration for administrative purposes.

Linking Series Applications or Registrations under Section 51A and Section 82A –

Before 2007, trade mark series applications could only be lodged in one class at a time. If a brand owner filed the same series of marks in multiple classes, they’d end up with separate applications or registrations for each class. Sections 51A and 82A allow for these pre-27 March 2007 series applications or registrations to be linked. To qualify-

• The marks must be a series of identical trade marks.
• Goods/services fall into different classes.
• The filing date is the same.
• They share the same owner.
• They are in the same part of the Register.

This provision allows older series marks to be grouped, again improving efficiency.

How to Request Linking?

The process to request linking is straightforward-

• No government fee is required.
• A written request (usually a simple letter) is sufficient, as long as it clearly identifies the trade marks involved and expresses the intention to link them.
• It’s best to list each mark’s number and ensure they meet the relevant legislative criteria.

Once IP Australia processes the request-

• The marks are formally linked under a designated parent file.
• All documentation and correspondence going forward is recorded under that parent registration.
• A new certificate of registration is issued.
• The linking will also be published, keeping the public register up to date.

Additional Considerations

• Divisional applications can also be linked, provided they meet the same eligibility criteria.
• If the linked registrations include convention priority claims or endorsements, these will be reflected under the parent record, either fully or with clarifications if they apply only to specific classes.
• Any further updates (like changes in ownership or renewal) must be processed via the parent registration only.

Thus, while the amalgamation of trade marks may seem like an obscure administrative footnote, it still holds value for many long-standing brand owners. If your trade mark portfolio includes pre-1996 applications or registrations, or if you filed a series of marks before March 2007, it’s worth reviewing whether linking could benefit you.

At our firm, we specialize in helping clients manage both new filings and legacy trade mark issues with care and precision. If you’re unsure whether your older marks qualify for amalgamation or would like help streamlining your records, we’re here to assist.

Let’s take the guesswork out of your trade mark portfolio and bring it all under one roof, i.e. where it belongs.