Suppose IP Australia raises an objection against your trade mark application during the examination process. In that case, you may consider several options to overcome any issues. One such strategy is filing a request with IP Australia to divide your application into two separate applications with the same filing date. This article provides insight into what a divisional application entails and what you may need to keep in mind when pursuing this option.
What Does it Mean to Divide an Application?
Dividing an application means keeping certain goods or services in the original pending application for registration. This is known as the ‘parent’ application. Meanwhile, you can move certain goods or services to a fresh, new application, known as the ‘child’ application.
This option is suitable when the original single application faces examination issues concerning only a particular subset of your goods and services, and you require more time to respond to the issues.
The parent application will maintain the same acceptance deadline whilst the child application obtains another 15 months to overcome the issues raised by IP Australia. Additionally, the child application maintains the original filing date. This means the subset of your goods and services ready to proceed can do so through the parent application while you address the remaining obstacles through the child application.
The filing date of a trade mark application is important. If your trade mark is registered, your rights are enforceable from the filing date.
When Would a Divisional Trade Mark Application Be Relevant?
There may be certain circumstances where you might consider filing a divisional application.
For example, suppose your trade mark is facing a conflict objection with another prior similar trade mark registration or application. Accordingly, you can divide your application. Here, you may decide to separate the goods and services that are in conflict from the parent application, and transfer them to the child application. This will allow the parent application to proceed to acceptance.
Suppose your trade mark application is facing a descriptiveness or non-distinctiveness issue. Additionally, the objection concerns only particular goods and services in the classes you have claimed. In that case, you could file a divisional application to separate those goods or services so that the parent application can proceed to acceptance.
You will then have 15 more months to respond to any objection associated with the particular goods and services you have divided out.
Continue reading this article below the formConditions for a Valid Divisional Application?
You must meet certain conditions for a valid divisional application. The Trade Marks Act 1995 (Cth) establishes these conditions in sections 45 and 46. Namely:
- the trade marks and the owners of the trade marks must be the same;
- the parent application must be a single application;
- the parent application must be pending when the divisional application is filed;
- the divisional application must specify the goods or services to which it relates;
- the divisional application must be for some only of the goods or services of the parent application; and
- the divisional application must specify the goods or services that are to remain in the parent application.
What Does ‘Some Only’ Mean?
A divisional application must be for ‘some only’ of the goods or services that have been claimed in the parent application. That is, the goods and services present in the parent application should not also be presented or encompassed in the divisional application.
The table below provides an example of a valid
| ‘Some Only’ | Not ‘Some Only’ |
| Parent application (before the division) claims “alcoholic beverages (except beer)” in class 33. Divisional application claims “hard seltzer (alcoholic)” in class 33. The divisional is for ‘some only’ of the alcoholic beverages (except beer). This is because hard seltzers are a particular type of alcoholic beverage, as are vodka, rum and gin. | Parent application (before the division) claims “alcoholic beverages (except beer) including seltzers, vodka, rum and gin in class 33. Divisional application claims “alcoholic beverages (except beer) including vodka, rum and gin in class 33. Although the divisional application has removed the particular good “seltzers”, this good is still encompassed within the broader claim for “alcoholic beverages”. As such, the divisional application is not ‘some only’ of the parent application. |
Costs
The government fees associated with a divisional application are $400 per class.
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Key Takeaways
A divisional application is a second application from an original single application (the parent application). You will have two trade mark applications (for the same trade mark) with the same priority date. However, they will cover different goods and services. There are certain criteria that your divisional application will have to meet to be valid. Further, a divisional application may not always be the best strategy to overcome objections that your trade mark application may face in the examination.
If you need advice on responding to an adverse examination issue for your trade mark application or if you have any questions about trade marks, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The government fees associated with a divisional application are $400 per class.
The parent trade mark application must be pending when the divisional application is filed. As such, so long as the parent application is still pending, you can file a divisional application. You cannot file a divisional application after the parent application lapses.
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