Brands change. Sections 11 and 12 of the Trade Marks Act (Chapter 385) set the limits of how far a registration can change with them.
Section 11 — altering the entry
(a) correct an error in the entry of a trade mark in the Register; or
(b) enter a change of name, address or description of the registered proprietor; or
(c) cancel the entry of a trade mark; or
(d) amend the specification of the goods — but so that the amendment does not in any way extend the rights given by the registration; or
(e) enter a disclaimer or memorandum relating to the mark that does not in any way extend the rights given.
Under section 11(3) the Registrar may also correct an error, or enter a change, in the name, address or description of a registered user. A person aggrieved by a decision under section 11 may appeal to the Court (s 11(2)).
| Allowed | Not allowed |
|---|---|
| Correcting a typographical or clerical error in the entry | Adding goods to the specification |
| Recording a change of company name or address | Broadening the description of goods |
| Cancelling the registration voluntarily | Removing a disclaimer or limitation so as to widen the right |
| Narrowing the specification of goods | Changing the mark itself — that is section 12 |
| Adding a disclaimer or memorandum that narrows the right | Antedating the registration |
Paragraphs (d) and (e) both carry the words “does not in any way extend the rights given by the registration”. A registration can always be cut down; it can never be widened. Wider protection means a fresh application under section 32, taking a new date under section 45 and facing examination under section 33 and possible opposition all over again.
Section 5(2) sits alongside section 11 and works on the applicant’s side of the counter: the Registrar may permit amendment of an application, a notice of opposition or other document, or amend an entry in the Register, to correct a clerical error or obvious mistake. Section 5(3) imposes the same core limit — an amendment of an application must not substantially affect the identity of the trade mark.
Section 12 — altering the mark itself
The registered proprietor may apply to the Registrar for leave to alter the trade mark in a manner not substantially affecting its identity, and the Registrar may refuse the leave or grant it on such terms and subject to such conditions and limitations as he thinks fit.
This is the same phrase that appears in section 5(3), in section 33(3), in section 31(1)(c) and in section 30(1). It runs through the whole Act: the mark that comes out must be the same mark.
Modernising a typeface, tidying a device, adjusting proportions, or dropping a purely descriptive element that was disclaimed anyway may pass. Changing the word, adding a new distinctive element, or replacing the device will not. A genuine rebrand is a new mark and needs a new application — behind anyone who filed in the meantime.
Sections 12(2) to (7) — how an alteration is decided
- Application by the registered proprietor for leave (s 12(1)).
- Advertisement. The Registrar may require the application to be advertised in the prescribed manner (s 12(2)).
- Opposition. Any person may, within the prescribed time, give notice to the Registrar of opposition, and shall serve a copy on the applicant (s 12(3)).
- Evidence. The Registrar may require the applicant or the opponent to appear before him and give evidence or further explanation (s 12(4)) — backed by the section 5(1) powers to summon witnesses, take evidence on oath and require documents.
- Decision. The Registrar shall consider the application and the opposition (if any) and shall decide the matter (s 12(5)).
- Appeal. A person aggrieved may appeal to the Court (s 12(6)).
- Entry and advertisement. Where leave is granted, the Registrar shall alter the Register accordingly, and notice of the alteration shall be advertised in the prescribed manner, including a representation of the mark as altered unless that representation was already advertised under subsection (2) (s 12(7)).
Section 12(3) says “any person” — the same breadth as section 40(1), and wider than the “person aggrieved” requirement in section 13 and section 14. A competitor who watches the advertisements can intervene in an alteration just as in an application.
If the alteration is too big
Where the change goes beyond what section 12 permits, the options are:
- File a fresh application for the new mark, keeping the old registration alive in the meantime. Under section 30(2), use of the whole mark is use of any registered part of it in the same name, which can keep an older registration alive during a transition.
- Register the new mark and let the Registrar associate the two under section 28. Section 30(1) then allows use of the associated mark to be accepted as use of the older one — the answer to a section 14 attack during the changeover.
- Register a series under section 31, where the variants differ only in colour, in statements as to the goods, number, price, quality or place names, or in other non-distinctive matter.
- Keep using the old mark for the run-off period, so it is not exposed to removal for non-use while the new registration is pending.
Alteration by the Court
Sections 11 and 12 both operate on the proprietor’s own application. Where an entry is wrong and the proprietor will not fix it, the route is section 13: on the application of the Registrar or a person aggrieved, the Court may make an entry wrongly omitted, delete or amend one wrongly made or wrongly remaining, insert a condition or limitation that ought to be inserted, or correct an error or defect — including by moving a registration from Part A to Part B.
Sources
- Trade Marks Act (Chapter 385) — ss 5, 11–14, 28, 30–33, 40, 45
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.