9.6. Amendments after registration

Federal Register of Legislation - Trade Marks Regulations 1995

Federal Register of Legislation - Trade Marks Act 1995

Amendments after Registration are dealt with in Part 8 of the Act, including (in Division 2) the amendment of a trade mark as a result of application to a prescribed court by an aggrieved party.  The rectification of the Register by this means and the cancellation of a registration, by either the court or the Registrar, are dealt with elsewhere in this Manual.

• Part 42 Rectification of the Register
• Part 41 Cancellation of Registration

6.1 Section 81 - correction of Register for Office error

Section 81 allows the Registrar, on his or her own initiative, to correct any office error or omission that has occurred in the entering of information on the Register. Note that this power has been narrowly construed by the Full Federal Court in Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109). Section 81 will most clearly apply in relation to correction of obvious data entry errors- namely, where the Registrar has entered the wrong data despite being provided with correct data. More complex requests for correction under s 81 should be escalated to the Quality, Practice, and Customers team for consideration.

6.2 Section 82 - allows for future reclassification

Section 82 allows the Registrar, in accordance with the regulations, to adapt the designation of goods or services in respect of which trade marks are registered, in order to reflect any change in the classification of goods or services under the Act.  This provision could be used to update applications to reflect changes in the Nice Classification if the Office wished to go down that path.  However, no regulations exist to support it at this time. 

6.3 Section 83 - amend registered trade mark

Section 83 allows for amendment of a registered trade mark and for amendments to particulars of goods and/or services covered by the registration, or any other particulars of the registration, as follows:

6.3.1 An amendment to a registered trade mark is allowed provided that the amendment does not affect the identity of the trade mark as published under section 30 (paragraph 83(1)(a)).  This is intended to avoid “incremental” changes to a trade mark that may eventually result in it becoming significantly different from the trade mark that was originally applied for. The assessment for “Additions or alterations not substantially affecting the identity” in s7(1), 100(2), 65(2), 83 involves the same considerations as the assessment for “Substantially Identical” trade marks (s44).

6.3.2 Amendments are allowed to particulars of goods and/or services covered by the registration, or to any other particulars of the registration, provided that such amendments do not extend the rights the owner of the trade mark has in the registration.  The amendments allowed to registrations under section 83 mirror to some extent those allowable to applications under Part 6.  Any decision of the Registrar upon an amendment made under section 83 is appealable to the Federal Court or the Federal Circuit Court (formerly the Federal Magistrates Court).

6.4 Section 91 - amend certificate of registration

Section 91 allows the Registrar to make corresponding amendments, as considered appropriate, to the certificate of registration after an amendment has been made to the registered particulars of a trade mark.