Amending Goods or Services in an Application

When applying for a trade mark, one of the most critical components is the specification of goods and/or services, essentially, what your trade mark will protect. This list should reflect how you use or plan to use your brand. However, it’s common for applicants to start broad, perhaps too broad. That’s where the ability to amend your specification becomes a useful tool.

Why Would You Amend a Trade Mark Specification?

A clear and focused specification improves your chances of registration and helps avoid unnecessary disputes or confusion down the line. Amendments are typically made for one of two reasons-

• To avoid objections raised by IP Australia, especially if a conflicting trade mark exists in similar goods or services.
• To better reflect your actual business activity, especially if your initial application was overly broad or contained generic descriptions.

When Can You Amend Your Specification?

Under Section 65 of the Trade Marks Act 1995, you may request an amendment to your application before it is accepted, and even afterward in some limited circumstances. The golden rule is this you can narrow your specification, but you cannot broaden it.

In other words, you’re allowed to-

• Remove goods or services
• Refine the wording
• Clarify the intended use

But you can’t add new goods or services that weren’t in the original application.

Types of Amendments- What Can You Change?

The common types of specification amendments and how they can help you resolve objections or better define your application-

Deleting goods or services

Sometimes, the cleanest way to remove a conflict with another trade mark is simply to delete the overlapping goods or services.

For example, if you applied in Class 9 for “computers; computer software; aerials” and a cited mark already covers “computers” and “software”, you might choose to delete those terms and proceed only with “aerials”.

This method is straightforward and often effective. It clearly removes the goods that are in conflict and leaves only those you truly intend to use.

Excluding specific items

Instead of deleting an entire class of goods, you may prefer to exclude specific problematic items. This allows you to keep a broader category while carving out the overlap.

For example, if your application includes “computer software”, and the cited mark covers “accounting software”, you might amend your specification to say, “Computer software, excluding accounting software“.

However, exclusions must be used carefully. Broad exclusions like “but not including any such goods for sound recording” might not hold up if the goods are still functionally similar. Moreover, exclusions should not state the obvious, for instance, “Eggs and cheese, but not including butter” adds no value. Where possible, being specific is the key.

Defining the intended use or industry

Another effective method is to specify the intended use or industry context of the goods or services. This works well when two parties are in the same class but operate in very different industries.

Say your application includes “spraying machines” in Class 7, and there’s a cited mark for “agricultural machinery”. You might amend your description to “Spraying machines, all for use in the automotive industry”.

This clearly distinguishes your goods and helps the examiner see that the two marks are unlikely to cause confusion in the marketplace.

How to Make the Amendment?

The process is relatively simple-

• Submit a written request to IP Australia.
• Clearly outline the proposed new wording.
• Ensure the amendment narrows the scope and does not introduce new goods/services.
• Wait for the examiner’s review and response.

We recommend working with an experienced trade mark professional to ensure the revised wording is strategically sound and acceptable to IP Australia.

Key Tips for Applicants

• Avoid broad or unclear terms. Name your goods and services precisely.
• Only include goods/services that your business actually deals with (or realistically intends to).
• If there’s a cited trade mark, map out where your list overlaps and adjust accordingly.
• Making amendments proactively, especially before acceptance, saves time and reduces the chance of refusal.
• Don’t use exclusions just to tick a box. They need to clearly change the scope of your claim in a meaningful way.

Thus, your trade mark specification is more than a list, i.e. it defines the boundaries of your brand’s legal protection. While it’s tempting to go broad, the smarter move is often to go clear, accurate, and strategic.

If you’ve received an objection, or simply realize your original application was too general, amending your specification under Section 65 of the Trade Marks Act 1995 gives you a second chance to get it right. Just remember, you can trim it down, but you can’t widen it.

Done properly, a well-amended specification not only improves your chances of getting your trade mark registered but ensures your brand is protected exactly where you need it.

Need help reviewing or amending your specification? Our team is here to guide you every step of the way. Let’s make your trade mark application as strong and accurate as your brand deserves.