9.4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)

If the details of the application are already published under section 30, the application may be amended as provided for under sections 63, 65 and 65A.  However, only minor changes to the representation that do not substantially affect the identity of the trade mark may be possible and it is difficult to add extra classes or goods and services that would extend the scope of the application as originally filed.

Subsection 63(1) deals with amendments requested by the applicant.  Procedures for dealing with amendments under this subsection are dealt with below. 

Subsection 63(2) deals with amendments proposed by the Registrar in order to facilitate early finalisation of an application.  The procedures for dealing with amendments under subsection 63(2) are dealt with elsewhere in this Manual.

Part 18 Finalisation of Application for Registration

4.1 Subsection 65(2) - amend representation of trade mark

Subsection 65(2) allows amendments to the representation of the trade mark, provided that the identity of the trade mark as published is not substantially affected.  The assessment for “Additions or alterations not substantially affecting the identity” in s7(1), 100(2), 65(2), 83) involves the same considerations as an assessment for “Substantially Identical” trade marks (s44). The test is not in any quantitative sense whether the alteration is a large one or a small one, but is a question of whether the amendment would substantially affect the identity of the trade mark, that is, of the extent to which it would change the substance or content of the feature or features which constitutes the trade mark's distinctive or main identifying element or elements.  (For guidance, see Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407; Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; Optical 88 Ltd v Optical 88 Pty Ltd (No. 2) [2011] FCAFC 130).

For additional information about substantially identical trade marks please see Part 26.5.

4.2 Subsection 65(3) – amend application to which section 51 applies to remove one or more trade marks

Subsection 65(3) allows the amendment of “series” applications to delete one or more trade marks not part of a valid series.

4.3 Subsection 65(4) - amend to correct class

Subsection 65(4) amendments correct an error in the classification of any goods or services specified in the application.  An example would be if the class was wrongly entered because the applicant was mistaken about the correct class, or simply wrote in the wrong number.

4.4 Subsection 65(5) - amend to add one or more classes to the goods or services

Subsection 65(5) allows amendments to be made to add to the class or classes of goods or services specified in the application one or more other classes of goods or services.  In particular, there are occasions where the applicant has nominated an incorrect class, or where the applicant has nominated goods in one class but clearly intended to seek protection in all the classes in which the goods of that kind are classified.  For example, the applicant has applied for “blinds of all kinds” in class 20.  The classification system for trade marks also lists blinds in classes 6, 19 and 24 depending upon their construction.  Under this subsection it is allowable to add those extra classes.  However, amendments can only be made under subsection 65(5), to add one or more classes of goods or services to an application in this way if the Registrar believes it is “fair and reasonable in all the circumstances to do so”.

4.5 Subsection 65(6) - amend to change type of registration

Subsection 65(6) amendments change the type of registration, e.g. from certification to collective trade mark.  This type of amendment would most likely result from the examination process if it was found that the applicant had wrongly nominated the type of registration required.

4.6 Subsection 65(7) - amend any other particulars including specification

Subsection 65(7) amendments relate to any other particulars in the application, provided that the applicant's prospective rights in the application are not thereby extended.  Amendments to the specification of goods or services and priority details would be covered by amendment under this subsection.  Examiners are able to process requests over the phone, which are related to classification issues provided that:

i. the suggested amendment has been clearly spelt out in the examiners report;

ii. the owner or agent authorises it; and

iii. the amendment is not to overcome a substantive objection.

Examiners are also able to process phone requests for other minor amendments, such as the addition of the convention application number for a priority claim and adding a translation endorsement.*

*Note: Once an amendment narrowing a specification of goods or services has been made, it is not allowable to make a subsequent amendment to re-instate the deleted items as this would amount to an extension of the applicant's prospective rights as at the time the amendment was applied for. 

4.6.1 Subsection 65(8) – amend applicant to a person with legal personality

Subsection 65(8) amendments relate to circumstances where an application specifies an applicant without legal personality. Subsection 65(8) provides that such an application can be amended to change the applicant to a person with legal personality if that person can be identified as having made the application.

This subsection does not cover situations where an applicant has legal personality, but the application was filed in the name of the wrong applicant.

4.7 Section 65A – amend application to correct a clerical error or an obvious mistake after publication

Section 65A provides the Registrar with more scope, when this is fair and reasonable, to correct clerical errors or obvious mistakes in published applications not allowable under section 65.  Because these changes may result in an extension of the rights the applicant would otherwise have in the application, if the Registrar is satisfied that the request for amendment would be granted, it must be published, to give other parties an opportunity to oppose the amendment.  However, it is not necessary to publish an application for amendment under section 65A, if the Registrar is not intending to allow the amendment.

4.7.1 Processing of section 65A amendments

EL1 exam team leaders will process most section 65A amendments.  It is not expected that section 65A requests will ever be actioned without a written request.  Also, section 65A amendments are likely to need to be supported by a declaration.  

Pre-examination section 65A amendments (requested after an application has been published) will be forwarded to the ‘Head Examiner’ work basket as per other ‘ad hoc’ amendments. A project officer from the Quality, Practice, and Customers team responsible for managing the ‘Head Examiner’ basket will consider the pre-examination amendment.

Other amendment requests will come to examiners during the course of examination of an application.  If an examiner believes they have a request for an amendment (probably most commonly to the statement of goods or services, but also possibly to the trade mark) which cannot be made under section 65, but which appears to meet the criteria for section 65A, they should refer it to their team leader for consideration.

The team leader should determine whether the request is beyond the scope of a section 65 amendment, but qualifies under section 65A, requires a declaration to support it, and take the necessary steps thereafter to publish the amendment for opposition purposes. However, if an amendment fails section 65, the applicant or agent should not be asked to consider resubmitting the amendment under section 65A unless there is information in the section 65 amendment request to indicate that the amendment is a result of a clerical error or obvious mistake.

Post acceptance amendments during opposition will be assessed and processed by APS6 Duty Officers and EL1 hearing officers.

4.7.2 Kind of amendments that could be made under section 65A

It will not be appropriate to limit the Registrar’s discretion under this section by comprehensively listing the kinds of amendments that may be “in” or “out” of this provision.  The amendment must be to “correct a clerical error or obvious mistake”, but it must also be the Registrar’s opinion that “it is fair and reasonable in all the circumstances of the case to make the amendment”.  Considerations would include:

i. the timing of an amendment request in the life of an application (a request many months after filing would be unlikely to be allowed); and

ii. whether a search locates conflicting marks whose rights may be affected by the change. In this last scenario it may be necessary to notify those trade mark owners, in line with processes used for notification of owners of cited marks in section 44(3) and 44(4) acceptances.  

Section 65A amendments might include amendments to trade marks to correct misspellings (e.g. changing GEEN FELDS to GREEN FIELDS) or amendments to the classification including the wording of goods and/or services.

4.7.3 Publishing and Opposition

If the section 65A amendment is considered fair and reasonable the amendment will be published in Australian Trade Mark Search to allow for a one month opposition period within which a person can oppose the proposed amendment.

If opposition to an amendment is filed (and served on the applicant), the opposition process set out in regulations 5.7 to 5.15 will apply, as it does to oppositions to section 224 extensions of time.

The amendment will be approved six weeks after the publication date, if no opposition has been filed.