8.2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006

Section 239A Linked trade marks.

Section 239A allows the registered owner, who owns more than one registration, lodged on the same day for the same trade mark prior to January 1996, to link their registered trade marks so that they are treated as one trade mark registration. The criteria for registrations to become linked (amalgamated) are:

• The registrations are for the same trade mark

• The trade marks were registered before 1 January 1996

• For goods/services in different classes

• Applications lodged on the same day

• Have the same registered owner

The trade marks requested for linking are to be in the same part of the Register (i.e. same status) and only applies to trade marks registered prior to 1 January 1996.

Section 51A Linking series applications and 82A Linking series registrations

Section 51A and section 82A allow an applicant to apply to link series applications made before the commencement of the new series multiclass provisions (27 March 2007).  Under the 1995 Act applications could be lodged as a series of marks, but in one class only. The criteria for series applications/registrations to be linked (amalgamated) are:

• Identical series marks

• Goods/services are in different classes

• Applications lodged on the same day

• Have the same trade mark owner

The trade mark applications/registrations requested for linking must be in the same part of the Register (i.e. same status) and only applies to trade marks filed before 27 March 2007.

No fees are payable in relation to requests for linking under s243, s51A and s82A.

A request for linking in the form of a letter will be sufficient to initiate a request, as long as the intent to link is clear and the trade marks are listed.

Divisional trade marks can be linked as long as they meet the relevant criteria.

Trade mark applications/registrations which are linked and have the same convention country priority claims will carry the convention claim on the “Parent”. If the convention country claim relates to only one or some of the applications/registrations, then it will be necessary to add an endorsement to the effect that the convention country priority claim applies to the goods/services in the relevant classes.

Trade mark applications/registrations which are linked and have the same endorsement will carry the endorsement on the “Parent”. Where endorsement details are different, these will need to be considered before linking can be processed.  If the endorsement on one trade mark relates specifically to that class then the endorsement should be added to the ‘Parent', specifying that it relates to that class only.

Linking will be advertised in the Trade Marks Official Journal and a standard notice generated. A new certificate will also be printed.

Once linked, all files will be merged into the parent file.  All incoming and outgoing documentation must be captured against and attached to the “parent” file only.

Any further actions in relation to the linked trade marks must only be against the “parent” number.