OOPS! I found a mistake in a Trade Mark Application. Can it be fixed?

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As trade marks attorneys, we are often asked to assist when something has gone wrong with an existing trade mark application.

Anyone providing professional services will have experienced the frustration (and panic) that occurs when an error is found in a transaction. One example that springs to mind is when Citibank NA accidentally paid $900million to a number of Revlon’s creditors – over 100 times what should have been repaid to them at the time[1]. Big oops.

Although an error of that scale is unlikely to happen to a trade marks attorney, mistakes can happen. It could be a simple clerical error, or that the client provided inaccurate details, or just that further information has come to light which means that the application as originally filed is unsuitable.

Although an error of that scale is unlikely to happen to a trade marks attorney, mistakes can happen.

In the case of Frucor Beverages Limited v The Coca-Cola Limited Company [2018] FCA 993, Frucor Beverages Limited applied to register a colour trade mark for the shade of green on their V branded energy drink cans, with the description of the colour as Pantone 376C.  To satisfy IP Australia’s formality requirements, Frucor’s representatives also filed a physical swatch, which was the same colour as the swatch used for Frucor’s New Zealand colour trade mark application. However, unbeknownst to them, the colour of the swatch was not Pantone 376C, but a noticeably darker shade of green. They realised a mistake had been made but did not take any steps to try rectify it until years later. This was one of the reasons that Frucor’s application was successfully opposed after a lengthy battle in the courts.

This is just one unfortunate example of human error.

It could be a simple clerical error, or that the client provided inaccurate details, or just that further information has come to light which means that the application as originally filed is unsuitable.

So, is it possible to amend a trade mark application after it’s been filed?

In many cases, yes. There are several amendments that are permitted. These include, inter alia:

  • correction of the applicant name and address
  • a change of the representation of the mark
  • adding endorsements and translation endorsements of non-English words and non-Roman characters
  • changing endorsements (other than translation endorsements)

However, not all requests for amendment will be granted and the timing of the request is absolutely critical.

Amendments must be fair and reasonable and requests will be considered by the Registrar. It may be necessary to file a declaration in support of a request for amendment to explain why the change is required.

WHEN CAN I AMEND A MISTAKE?

IDEALLY - Prior to Publication

An application can easily be amended to rectify a clerical error or an obvious mistake prior to publication under section 64 of the Trade Marks Act 1995 (the Act). In practice, this is usually a small window of 1-2 days from filing and is the best time to remedy any errors.

NEXT BEST - Prior to Registration

Requests for amendment made after the application has been published on the register must be published in the Official Journal and can be opposed.

The permitted amendments under section 65 of the Act are:

  • correcting the representation of the mark provided it does not substantially affect the identity of the trade mark (e.g. changing a colour logo to black and white)
  • removing a mark from a series application
  • correcting a classification error
  • adding a class (if the Registrar considers it is fair and reasonable)
  • changing the type of application (e.g. a certification trade mark to a collective mark)
  • amending any other particular unless it would extend the rights of the applicant  
  • changing an applicant that does not have separate legal personality to a person that has a separate legal personality (e.g. an unincorporated association to trust beneficiaries or members of that unincorporated association)

LAST (BUT LIMITED) CHANCE - After Registration

Once a trade mark is registered, the amendments permitted by the Registrar are much more limited.

Only errors that are made by the Registrar can be remedied under section 81 of the Act. If the error is through fault of the applicant or the applicant’s representative, it is unlikely to be remedied by the Registrar. If this occurs the registered mark might, at worst, be invalidly registered and therefore not enforceable.

In one infamous Australian case a patent agent filed to record a change of applicant name of trade mark registrations in the name of Vokes Ltd (Vokes) to AES Environmental Pty Ltd (AES). This was in fact incorrect, because the applicant had not changed its name. However the register was amended in line with the agent’s request. 13 years later the Vokes sought to remedy this and it was allowed by the Registrar. However this was successfully overturned[2].Laminar had been assigned those marks from AES.

Upon appeal by Vokes, the Federal Court decided that the error was in what was recorded, not the act of recording it. The Registrar only holds powers to correct its own errors, but not those of the agent.

Due to these limitations, it is important that any errors are caught and remedied before the trade mark is registered.

If you have any questions about trade marks in Australia or New Zealand then please contact Clare Liang

[1] Citibank NA v. Brigade Capital Management, 20-cv-6539, U.S. District Court, Southern District of New York (Manhattan)

[2] Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447

Further reading
Broadly Speaking - Breadth of Goods and Services Specifications in AU and NZ Trade Marks
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Microorganism Deposits - Extension of Time to File Deposit Refused
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