Divisional Trade Mark Application: It’s Purpose and Benefits

Author: Ian Aldridge, Progressive Legal

A divisional trade mark application is a valuable tool that allows you to create a new application from your existing trade mark application, commonly referred to as the “parent” application.

This approach provides numerous advantages and can help resolve conflicts or objections associated with your original application. On this page, we will explore the concept of divisional trade mark applications and highlight the reasons why filing one can be beneficial for your business.

What is a Divisional Trade Mark Application?

A divisional trade mark application involves separating specific goods or services from your parent application to create a new application. By doing so, you can address any conflicts, objections, or oppositions related to the original application, allowing it to proceed towards acceptance or registration.

This strategic approach ensures that your trade mark rights are protected while enabling you to navigate potential obstacles effectively.

What are the reasons for filing a divisional application?

Resolving Conflicts with Other Trade Mark Applications or Registrations

If the goods or services listed in your parent application conflict with another trade mark application or registration, filing a divisional application can be a prudent move.

By excluding the conflicting goods or services from the parent application, you can advance it towards acceptance while simultaneously creating a divisional application specifically addressing the excluded items. This allows you to safeguard your trade mark rights without compromising the overall application.

Overcoming Objections Under Sections 41, 42, or 43

In some cases, certain goods or services listed in your parent application may face objections under Sections 41, 42 or 43. To proceed with the acceptance of the parent application, it is possible to exclude the objected goods or services and convert them into a divisional application.

By doing so, you can address the objections separately while ensuring the remaining goods or services move forward in the registration process unhindered.

Mitigating Opposition Threats

If an opposition is either threatened or already filed against your parent application, filing a divisional application can provide a strategic solution. By excluding the conflicting goods or services from the parent application and forming a divisional application dedicated to those items, you can proceed with the registration of the parent application while effectively managing the opposition concerns.

This approach allows you to safeguard your trade mark rights without undue delays or complications.

Key Requirements for Filing a Divisional Application

To file a divisional application successfully, two essential criteria must be met:

Parent Application Status

The parent application must be pending at the time of filing the divisional application. This requirement ensures that the divisional application maintains a clear relationship with the original application, creating a cohesive legal framework for your trade mark protection strategy.

Presence of Goods/Services in the Parent Application

The goods or services forming the divisional application must still be present in the parent application at the time of filing. This criterion ensures that the divisional application focuses on specific items and maintains consistency with the overall trade mark protection strategy.

Other Conditions 

Other minor conditions of valid divisional applications include: 

• the trade marks in the divisional application are the same as for the parent application; 
• the trade mark applicant in the divisional application is the same as for the parent application; 
• the parent application must have a single application; and 
• the divisional application must be for only some of the goods and services of the parent application. 

Practical Process

Once a divisional application is filed, IP Australia will examine the application and either issue a notice of acceptance if all issues are resolved, or issue a new 15-month deadline for the applicant. This usually takes 2-4 months

Meanwhile, any divisional application will maintain the same priority date as the parent application and will continue to pose a bar to any applications filed after this priority date. As such, divisional applications can also be used to preserve the applicant’s rights to a trade mark whilst preparing for another action such as evidence of use.

There are no limits to the number of times a divisional application can be filed, however, each time a divisional application is filed, the goods and services listed in the application will need to be divided between the parent application and the divisional application. This means at least one item will need to be left behind in the parent application whenever a divisional application is filed.

Key Takeaways

Once a divisional application is filed, IP Australia will examine the application and either issue a notice of acceptance if all issues are resolved, or issue a new 15-month deadline for the applicant. This usually takes 2-4 months

Meanwhile, any divisional application will maintain the same priority date as the parent application and will continue to pose a bar to any applications filed after this priority date. As such, divisional applications can also be used to preserve the applicant’s rights to a trade mark whilst preparing for another action such as evidence of use.

There are no limits to the number of times a divisional application can be filed, however, each time a divisional application is filed, the goods and services listed in the application will need to be divided between the parent application and the divisional application. This means at least one item will need to be left behind in the parent application whenever a divisional application is filed.

Seek Professional Advice

If you have received an adverse report from IP Australia regarding your trade mark application, it is crucial to explore the available options and seek professional advice.

Our team of experienced trade mark lawyers can provide valuable guidance on divisional applications and other strategies to address conflicts or objections effectively. Get in touch with us today to discuss your specific situation and protect your trade mark rights.

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