Did you forget to include essential goods and/or services in your trademark application? If so, you do not have to make a new application, and instead can simply expand the list of goods and services for your trademark. You can do this either during an ongoing application process or after a trademark has been registered. The trademark’s priority for the additional goods and services will apply from the date on which the expansion application is filed.
The advantage of doing this over making a separate mark application for the additional goods/services is that it is more economical to make the additions in an ongoing application process, i.e. you only have to pay a fraction of the fees that you would be charged otherwise. However, if the goods/services are expanded after the trademark has been registered, all fees have to be paid again, although only one trademark will need to be renewed through payment of the renewal fee when the protection period expires.
To make an expansion application, please use Form MA 650.
The rules for expansion applications are the same as those for trademark applications.
NB: A sale or the granting of a licence or lien, for example, does not have to be entered/shown in the trademark register per se in order to be legally valid. However, this is recommended for a variety of reasons, primarily to guarantee that these transactions are broadly publicised.
The registration of an international trademark can
Subsequent designation can be carried out either by making a direct application to WIPO to extend the protection territory (form MM 4) or by applying to the Austrian Patent Office (no form required); in this case, it is essential that all information requested on the form is provided. The protection period for the subsequent designation will expire on the same date as the protection period of the international registration.
You can use either English or French for the subsequent designation. If an application for subsequent designation is made for an international trademark that is based on a basic application, a declaration from the originating office (= Austrian Patent Office) regarding the basic trademark is required in order to confirm that the basic application has matured to registration.
In addition, you can apply to make changes to the register entry in the following cases: the trademark is transferred (wholly or partially) due to a change of owner, or the name (company name change) and/or address changes.
Please refer to the Schedule of Fees in information sheet MA 571 (parts II and III) or the WIPO website for the exact fees payable directly to WIPO for subsequent designation and for other changes to the register entry.
NB: You cannot expand the list of goods and services (which is possible for Austrian trademarks) after filing an application.
Uebertragungserklärung [Transfer declaration], docx, 64 KB
Uebertragungserklärung [Transfer declaration], pdf, 221 KB
Antrag Firmenwortlautänderung bzw. Übertragung [Company name change or transfer application], docx, 70 KB
Antrag Firmenwortlautänderung bzw. Übertragung [Company name change or transfer application], pdf, 91 KB
Antrag auf Weiterbehandlung [Application for further processing], doc, 54 KB
Antrag auf Weiterbehandlung [Application for further processing], pdf, 161 KB
Antrag auf Erweiterung [Expansion application] – MA650, doc, 134 KB
Antrag auf Erweiterung [Expansion application] – MA650, pdf, 243 KB
Antrag auf Weiterleitung des Gesuchs um internationale Markenregistrierung [Application for forwarding the request for international trademark registration], docx, 52 KBAntrag auf Weiterleitung des Gesuchs um internationale Markenregistrierung [Application for forwarding the request for international trademark registration], pdf, 260 KBRENEWAL OF THE INTERNATIONAL REGISTRATION, docx, 66 KB
RENEWAL OF THE INTERNATIONAL REGISTRATION, pdf, 189 KBDECLARATION OF INTENTION TO USE THE MARK – UNITED STATES OF AMERICA, doc, 960 KB
DECLARATION OF INTENTION TO USE THE MARK – UNITED STATES OF AMERICA, pdf, 82 KB
REQUEST FOR CONTINUED PROCESSING, docx, 1 MB
REQUEST FOR CONTINUED PROCESSING, pdf, 151 KB
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