NSW Trademark application amendment & adverse report

Australia's #1 for Law
Join 150,000 Australians every month. Ask a question, respond to a question and better understand the law today!
FREE - Join Now

Saru

Member
25 March 2019
3
0
1
Hi

Is it possible to amend the trademark name in the standard application once the adverse report has been issued based on trademark name being substantially identical with other trademark name?

If not, can we file a new application with an additional word along with the previous name that was intended to be registered. For eg. if the previous name was "Cloud" and an adverse report was issued, can we change the name to "Cloud CX" or "CloudBot"? What are the chances of the application being approved in that case?

Thanks
Saru
 

Rob Legat - SBPL

Lawyer
LawTap Verified
16 February 2017
2,428
509
2,894
Gold Coast, Queensland
lawtap.com
It is possible to make amendments to a trade mark application on the grounds of "clerical error or obvious mistake". This can include changes to the trade mark applied for. This is only available before particulars of the registration have been published, which (given the adverse report) I suspect it would be where the application currently sits.

The chances of acceptance of the changed mark application depend on the same examination criteria, regardless of how the change is made. This involves a detailed consideration of the circumstances of the exact mark and, even then, it is best guess as the decision is up to the trade mark examiners.
 
  • Like
Reactions: Scruff