Amending a Trade Mark Application or Registration

Sometimes, even after carefully filing your trade mark application, things change. Maybe you spotted a typo. Maybe your product range will expand. Or maybe you realize the application was filed under the wrong name. The good news? You can amend your application, but the rules vary depending on when and what you’re trying to change.

When Can You Amend a Trade Mark Application?

Trade mark applications can generally be amended at any time before registration, but the type and scope of amendment depend heavily on when the application particulars were published.

There are three key stages-

• Before publication (under section 64 of the Trade Marks Act 1995)
• After publication but before registration (sections 63, 65, 65A)
• After registration (sections 81-83)

Before Publication

If your application hasn’t yet been published in the Trade Marks Office database (this includes the trade mark, applicant name, filing date, goods/services, etc.), you’re in a more forgiving window. Under section 64, you can request to correct clerical errors or obvious mistakes, even big ones like-

• Changing the trade mark itself
• Updating or correcting the applicant’s name
• Adjusting the specification of goods or services
• Swapping out the type of registration (e.g., from standard to certification)

This flexibility is great, but the window is short. Once the application goes live in the database, you’re bound by stricter rules. We recommend reviewing your application carefully with us soon after filing-so if something needs to be fixed, we can act fast.

After Publication

Once the particulars of your application are published (under section 30), changes become a bit trickier. The Registrar will only allow amendments if they’re considered “fair and reasonable” and do not unfairly affect third parties. Under the relevant sections it provides-

• Section 63 (General Amendments)

You can request a change in writing to correct or update details. But if it’s been a long time since filing, the Registrar may reject the request.

• Section 65 (Specific Types of Amendments)

This is where most mid-application changes fall. What can be amended is as follows-

• Representation of the trade mark– You can tweak the visual mark slightly, as long as the change doesn’t alter its identity. Think of minor touch-ups, not a rebrand.
• Delete trade marks in a series– If your application includes a series of marks, you can remove any that doesn’t belong.
• Correct a class number– Made a typo or picked the wrong Nice class? This can be fixed.
• Add a class of goods or services– This is only allowed if the Registrar finds it fair and reasonable. For example, if your original filing for “blinds” in Class 20 should’ve included Classes 6, 19, and 24, this can be corrected.
• Change the type of registration– Say, switching from a standard to a collective mark.
• Update goods/services details or priority claims– These are allowed if they don’t extend your rights beyond the original application.
• Fix issues around legal personality– If your application was filed in the name of a non-legal entity, this lets you correct it, i.e. if the right party can be identified as the actual applicant.

At our firm, we often assist in carefully assessing whether a change under section 65 is likely to be approved. A misstep here can set your application back significantly.

• Section 65A (Correcting clerical errors after publication)

If something slipped through and doesn’t fit under section 65, but was clearly a clerical or obvious mistake, section 65A can cure that. These might include-

• Fixing a misspelling in the trade mark
• Correcting classifications or wording of goods/services

However, these requests are usually advertised in the Official Journal to give other parties a chance to oppose the change. If no opposition is filed, the amendment is approved six weeks after the advertisement.

After Registration

Once your trade mark is registered, changes are only allowed in narrow circumstances-

• Section 81– Correcting an error made by the Trade Marks Office (e.g., typos).
• Section 82– Updating classes in line with changes to the Nice Classification system (though not currently used).
• Section 83– You can amend the trade mark itself (again, without altering its identity), or the details about goods/services, so long as these don’t broaden your original rights.
• Section 91– If a change is approved, the certificate of registration can be updated accordingly.

Keep in mind that post-registration changes are closely scrutinized. That’s why it’s smart to get things right early on, i.e. with legal advice.

Minor Amendments by Phone

For genuinely small issues, like correcting a typo in the address for service, or fixing a convention application number, you can request amendments over the phone. These are logged in the system with a record of conversation. However, anything beyond the basics must be submitted in writing. Not sure if your change qualifies as “minor”? We can tell you in five minutes and help you submit it properly.

Need help amending your trade mark application?

At our firm, we know that your business evolves, and sometimes your trade mark application needs to evolve with it. Whether you’re early in the process or facing a complex amendment after publication, we can guide you through-

• Drafting and lodging formal requests
• Advising on what changes are possible and which may be challenged
• Preparing supporting declarations when needed
• Responding to opposition, if it arises

We also help with post-registration amendments and ensure your rights stay protected from start to finish.

If you’ve realized something needs updating in your application, or just want a second pair of eyes before you file, get in touch with our team. We’ll make sure your trade mark journey stays on track.