Can I Modify My Logo After Making a Trade Mark Application?
If you have ever submitted a trade mark application, or have a registered trade mark for your business’ logo already, chances are you are already familiar with the trade mark process. However, as your business grows and evolves, you might be looking to rebrand. This may include amending your logo.
In short, it is possible to modify your logo any time after filing your trade mark application. However, there are limitations on how much you can amend your logo. Therefore, to help you understand your rights as a trade mark owner, this article will take you through how you can modify the logo for which you have registered a trade mark.
Amending a Trade Mark
It is possible to make changes to your trade mark after your trade mark details have been published. However, this is only the case if the amendment does not expand the scope of what your trade mark covers.
For example, adding new trade mark classes would not be an acceptable amendment. You also cannot make changes that would substantially impact the identity of your trade mark.
Therefore, in the context of your business’ logo, changing a design entirely would constitute impacting the identity of your logo. On the other hand, making slight changes to the arrangement of your logo’s elements, or updating the lettering in a minor way, is unlikely to be an identity change.
Trade Mark Identity
IP Australia will use a side-by-side comparison to assess whether the alteration to your trade mark substantially impacts your logo’s identity. Importantly, when weighing up the similarities and differences between the two versions, the essential features need to be the same. It is important that the overall impression of the trade marks remain identical. Essentially, there should be no confusion to consumers about the origin of the modified trade mark.
Amending a Trade Mark Application
Depending on the amendment required and the stage you are at in your trade mark application, different amendment procedures apply.
Amendments Over the Phone
If you have applied for trade mark registration, but its details have not yet been published, you will be able to make minor amendments over the phone. For example, a minor amendment will include very obvious spelling mistakes or clerical errors in the address you have provided for service.
Amendments in Writing
For amendments that you cannot make over the phone, you will need to make them in writing. For example, amendments that you need to make in writing include changes to the:
- applicant name;
- address for service;
- representation of the trade mark;
- removal of goods and services classes;
- transferring of goods and services classes; and
- translation or transliteration of non-English words.
It is important to note that you will need to request amendments to your trade mark after registration in writing.
To be eligible to modify your trade mark application for your logo after your trade mark details have been published, there are several key criteria you will need to meet. These are outlined in the table below:
|Fair and reasonable||IP Australia will only consider the proposal to modify your logo with a trademark if it deems it fair and reasonable. For example, if you have registered your trade mark a long time ago, and the proposed changes are substantial, it may not meet this criteria. This is to ensure that your proposed change is not unfair to your competitors’ businesses in such a way that the change will adversely impact them.|
|Advertising||An amendment to your trade mark may need to be advertised in the Australian Official Journal of Trade Marks before being accepted. |
As with your initial trade mark application, this advertisement will allow others to object to your proposed change if they believe that your logo’s modification will adversely impact them.
|Extension of time||If your proposed modification is opposed, you will be responsible for applying for an extension of time while the matter is being addressed.|
The limitations and methods to modifying your logo will depend on whether your trade mark details have already been published or not. Generally speaking, you will only be able to modify your logo if:
- the amendments are minor; and
- the overall identity of the trade mark remains the same.
Frequently Asked Questions
It is possible to modify your logo any time after filing your trade mark application. However, there are limitations to how much you can amend it. There are also differences in amendment processes. Generally, the proposed amendments will need to be made in writing and will need to be considered fair and reasonable.
You can modify a logo with a registered trade mark. However, this will only be possible in circumstances where the modifications do not impact the identity of your logo. Further, it is not possible to modify your logo in a way that will increase the scope of your trade mark protection.