Trademark Amendment

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    The trademark amendment that relates to the changes of the mark itself is prohibited by law. As a rule, if the copyright holder submits an application for amendments to the graphic or verbal element of the trademark, the result of the consideration of such an application will be unequivocal rejection. That is, it is impossible to make changes to a trademark by changing part of it. If it is necessary to change the visual form of a trademark, it is recommended to re-register it.

    In accordance with civil law, the exclusive right to a registered trademark is valid for 10 years. This is a considerable period and it is understandable that during this period the copyright holder may need to somehow change the information contained in the title document.  The law obliges the copyright holder to notify the patent office of any changes that he wants to make to the registered trademark. They also need official registration.

    What is trademark amendment?

    In order to ensure legal protection of the existing trademark, it is necessary to make timely changes to the state register of registered trademarks. If you change the name, change the legal address and other information about the copyright holders, it is recommended to notify the patent office in a timely manner by amending a trademark registration.

    The Madrid system allows TM owners to amend international registration. They may be as follows:

    • personal data of the copyright holder (name, address, registration of transfer of rights to another person);
    • narrowing of the range of goods and services provided (expansion is not allowed);
    • license fixing concerning the contracting parties;
    • registration cancellation.
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    To make changes, the trademark owner must fill out the appropriate application form (which can be found on the WIPO official website) and pay the corresponding fee.

    It is necessary to note that the possibility of a trademark registration amendment, i.e, its form, still exists. However, such a change should not change the visual and/or phonetic impression of the trademark. Usually, such applications are rarely satisfied and, as a rule, it is recommended that the trademark owner file a new application for registration.

    Legal aspects of trademark amendment

    Legal aspects of trademark amendment
    You can make changes to the trademark: postal addresses, names of owners, excluding secondary graphic elements.

    The World Intellectual Property Organization (WIPO) allows managing the process of registration and trademark amendment throughout the entire cycle: from filing an application to extending the period of legal protection. To do this, a large toolkit online can be used:

    • Manager of products and services designed to correctly compile or verify the list of products and services according to the international classification system.
    • Up-to-date database of countries members of the Madrid Agreement, contact details of their national patent offices for more information, as well as for interaction on refusals and appeals.
    • Fee calculator for calculating the financial costs of the international registration.
    • International application simulator to verify the possibility of obtaining legal protection.
    • Module for monitoring the status of applications in real-time (Madrid Monitor), which also allows you to get information about countries where the trademark registration was denied.
    • International trademark newsletter.

    Their full description and list are available on the official WIPO website.

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    So, why it is necessary to notify WIPO about the trademark amendment? Firstly, this is necessary so that when legal actions on a trademark (obtaining official certificates for the customs registry, registration of contracts, etc.) are taken in the future, the department’s specialists could do everything on time without additional requests. 

    Secondly, this is necessary for the TM holder to receive official correspondence from WIPO and national patent offices. In the event that opposition to registration or an application for termination of legal protection is filed ahead of time regarding the trademark, WIPO will send the notification to the address indicated in the certificate. If the company is absent at the indicated address, it bears the risk of losing the rights for the trademark.

    The pros and cons of trademark amendment

    In compliance with the Madrid system, the international registration of a trademark lasts for 10 years. This period may be extended repeatedly provided that the appropriate fee is paid to the World Intellectual Property Organization. At any stage of registration, the applicant has the right to amend the application materials; for example, register a change in the address or name of the applicant, make adjustments to the list of countries in which trademark registration is requested, etc.

    After the registration is done, it is very important that the information about the trademark owner: its address, the name of the company fully coincides with the data entered in the application form for registering the trademark. If the information on the TM holder will differ from the data given in the register, you will not be able to extend the trademark, register a license agreement or an alienation agreement (trademark assignment agreement), or, if necessary, prove that it is your company that owns the brand, for example, the court or on custom. If you decide to geographically expand the protection of your brand, you can apply for the expansion of international registration by adding additional countries. That’s why the trademark registration amendment is a good opportunity to keep all information about your trademark up-to-date which is a major advantage. Paying a fee to International Bureau up to 200 CHF for any amendment for the mark can be considered cons.

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    The Madrid trademark registration system is an attractive way to protect your business. It allows you to cover a large number of countries on the territory of which legal protection is required, while the procedure for registration and amendment is much simpler than in each individual country.

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