Changing your logo, amend your trade mark or file a new application?

You have spent months workshopping the new look. The designer has handed over the final files, the new signage is ordered, and the logo is about to roll out across your website, packaging and social media. Somewhere in the stack of decisions, one stands out: you registered your old logo as a trade mark years ago, and no employee is sure whether the update means new paperwork or none at all. The answer matters more than most owners expect, because protection attaches to what is actually entered on the register, not to the design you happen to be using.

The good news is that this is a decision you make deliberately rather than a trap that springs on you. When the identity of your mark changes, you have two realistic paths: ask IP Australia to amend the existing registration, or file a brand new application for the redesigned logo. A third option seems attractive but is largely closed off. You cannot simply keep using the new logo and assume the old registration quietly extends to cover it. The register records a specific representation, and rights flow from that record.

This article walks through the factors that decide which path fits your situation, so you can move through the rebrand without leaving your brand unprotected.

How far the redesign departs from the original

The first and most important factor is a legal threshold expressed in the Trade Marks Act 1995 (Cth). Under s 83 the Registrar may amend the representation of a registered trade mark if the amendment does not substantially affect the identity of the mark as at the time its details were published. The mirror rule for a pending application sits in s 65. The full Federal Court applied this same "substantially affect the identity" test in Woolworths Limited v BP plc [2006] FCAFC 132 when it considered amendments to trade mark applications.

The phrase is deliberately flexible, and that is the trap. A small refinement such as straightening a tilted word, adjusting a kerning issue, or switching a minor accent colour can often satisfy IP Australia that the identity of the mark is unchanged. A redesign that changes the shape, removes a distinctive element, or reorders the words is a different mark in substance, and the amendment route will be refused.

To decide where you sit, it helps to compare the two representations side by side and ask what a customer would say they now recognise:

• Little changed: If the overall impression, the dominant words, and the essential graphic are preserved, an amendment request is worth pursuing.
• Substantially changed: If you would describe the new version as a redesign rather than a tidy-up, treat it as a new mark.

IP Australia has discretion in this area. Even a genuine minor change can be knocked back if the registry sees a material shift in identity. Approaching the request expecting that the outcome is not guaranteed, and having the old and new versions ready to explain the continuity, puts you in the best position.

Whether the new mark is meant to cover new ground

A trade mark is registered in respect of specific classes of goods or services under s 17 of the Act, and the protection you hold is tied to the description on the register. Rebranding is a natural moment to review whether that description still matches what you actually sell or plan to sell. If you have added a product line, expanded into a new service, or changed the nature of your offering, the existing registration may not reach it.

This consideration interacts with the practical route you choose. An amendment under s 83 cannot extend the rights you already hold. If you need to add goods or services, or if the old description no longer reflects the business, you are likely filing a new application anyway. That is not necessarily a cost to resent. A fresh application lets you set the class specification against the business as it now stands rather than as it was three years ago, which can give you broader and more accurate protection for the same filing fee.

If your situation sits close to the line, a useful comparison is set out below:

• Amend the existing mark: suitable when the design change is minor, the identity is preserved, and the goods and services on the register still describe what you do. You keep the original filing date, which can matter for priority against later applicants.
• File a new application: suitable when the redesign changes the identity, when your goods and services scope needs to grow, or when the current class description is stale. The new mark gets its own filing date, so early filing is important.

Whether the words themselves are separately protected

Many logos combine a graphic element with the business name or a product name. A decision that frequently drops off the to-do list is whether that text is protected on its own as a word mark. A trade mark can consist of a "sign", and under s 6 a sign includes any letter, word, name, device, shape, colour, sound or scent. In practice this means a word mark and a logo are distinct registrations protecting different things.

A word mark protects the text itself, in any font, colour or stylisation. A logo mark protects the overall visual impression, including orientation, shape and style, rather than only the words inside the image. If your business name is valuable and you have protected only the combined logo, a redesign that drops or changes the graphic could expose the name itself to risk, even while the name text is unchanged.

Holding both gives you flexibility:

• Resilience to design changes: Because a word mark is not tied to a particular look, you can restyle the type and keep the protection.
• Broader coverage: A word mark can better reach a competitor who uses your name text in a different visual presentation.
• Room to evolve: You can refresh the graphic elements while the core brand identifier stays protected.

If you have been trading under a name and it is not separately registered, this rebrand is a sensible prompt to add it. The cost of one extra application is modest beside the risk of losing control of the name that anchors your brand.

Timing and what happens in the gap

Timing deserves more weight than most owners give it. A new application does not produce protection on the day you file. It is examined, and if it is accepted it proceeds to registration, a process that can take many months. During that period your rights are not yet secure in the same way they would be once registered.

There is also an asymmetry worth understanding. If you file a new application and, before it registers, a competitor applies for the same or a similar mark, your earlier filing date generally gives you priority. That advantage only helps if you file early. Waiting until the old registration lapses, or until the rebrand is fully public, lets a window of exposure open.

For a minor change that genuinely preserves identity, an amendment avoids this gap entirely because you keep the original registration and filing date. For a substantial redesign, there is no avoiding a new application, so the discipline is to file before or at the same time as you launch rather than after you start using the new mark.

When the change is part of a wider brand project

If the logo sits inside a broader rebrand, a name change, a restructure, or a move into new markets, treat the trade mark decision as one piece of a portfolio review rather than an isolated task. A new company name may need its own word mark. A move into a new industry may call for additional classes. Changes to ownership or the legal entity may require the register to be updated under other provisions, which is a separate housekeeping step from the identity question addressed here.

Seeing the rebrand as a portfolio moment helps you avoid the common failure of protecting the image while the growing business quietly outgrows the registration that supports it.

How an Artificer Legal trade mark lawyer helps you decide and act

The threshold between "minor, amend it" and "substantial, refile it" is not a bright line, and getting it wrong is costly in either direction. Amending when you should have refiled can leave you with a registration that does not match what you use. Re-filing when an amendment would have done can forfeit an earlier priority date, and it costs time and money for no benefit. Trade mark work at IP Australia can be handled by a registered trade marks attorney, and a qualified lawyer at Artificer Legal can assess your old and new representations, give you a reasoned view on whether the identity has changed, and act on the path you choose.

The practical assistance covers the ground a business owner should not freelance:

• stress-testing whether the redesign has preserved the mark's identity for the purposes of ss 65 and 83,
• reviewing the class specification to confirm it matches the goods and services you now offer or plan to offer,
• preparing the amendment request or filing the new application with the correct representation and particulars,
• advising on whether to add a separate word mark for your business or product name,
• and handling the correspondence, examination response and registration steps so the work happens correctly and on time.

A lawyer's value here is partly legal and partly administrative. The documents involved are precise, the representation must match the mark you actually use, and a mistake at filing can be difficult and expensive to undo. Working with a lawyer who does this daily turns a rebrand risk into a managed decision.

The threshold that most owners misjudge

The decision you are really making is whether your new logo is the same trade mark or a different one, and the register is the referee. The single most useful habit is to compare the old and new representations and ask honestly whether a customer would still describe the design as the same mark. If the answer is only barely, an amendment is worth attempting. If it is not, file a new application early, and file it before the new look goes public.

Underpinning the practical steps is a simple summary. A minor change that preserves the mark's identity can be handled by an amendment request to IP Australia under s 83 of the Trade Marks Act 1995 (Cth), though approval is discretionary. A substantial redesign, an expanded class scope, or the addition of a separately protected word mark points towards filing a new application to secure the current branding. Whatever you choose, review the whole portfolio while you are at it, update the register for any change in the owning entity, and remember that protection follows the record, not the artwork on your letterhead.