Divide and Conquer | Australian divisional trade mark applications

Australia allows for divisional trade mark applications [1]. If used strategically, a divisional application can achieve early acceptance for some goods or services and secure further time and avoid extension fees.

A divisional application is a second application based on the parent application. Provided that all relevant criteria are met, a divisional results in two trade mark applications for the same trade mark with the same priority date.

Rationale

Depending on the objections, a divisional application may achieve partial acceptance of a trade mark application. For example, it may be possible to divide an application to allow the trade mark to proceed for a limited sub-set of the goods or services claimed in the earlier (parent) application. This step will enable you to progress the new divisional application covering the remaining goods or services.

Criteria

The following conditions that must be met to file a valid divisional:

  • the trade marks must be the same; and
  • the trade mark applicants must be the same; and
  • the parent must be a single application; and
  • the parent application must be pending when the divisional application is filed; and
  • the divisional application must specify the goods or services to which it relates; and
  • 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.

Care is required in drafting a divisional application to ensure the “some only” requirement is met and to ensure the goods / services being divided out do not include those left in the parent.

Extension Tool?

The Australian Trade Marks Office allows an applicant 15 months from the initial examination report to secure acceptance. After the initial 15 months, the application can be kept alive by paying extension fees.

A divisional application is examined in the same manner as the parent. A report is issued (raising the same objections as the parent), allowing the applicant a new period of 15 months to respond to the grounds for rejection. Therefore, a divisional application can be a cost-effective tool for obtaining a further 15 months to secure acceptance while maintaining the parent’s priority date.

A parent application may be a divisional application (that is, a divisional of a divisional)[2]. Consequently, a priority date can be preserved for many years via a multi-generational divisional process if a trade mark application bears children, grandchildren, great-grandchildren….

National v International

Currently, it is not possible for a party who has filed an International Registration designating Australia (IRDA) to file a divisional application based on the IRDA.  

Following a consultation process in 2019, IP Australia sought public comment on the exposure draft of regulations to amend the Trade Marks Regulations 1995 to allow the division of IRDAs.

However, IP Australia does not intend to implement regulations in the near future as it considers that it would be better to consider the issue of division of IRDAs as part of a broader holistic consideration of trade mark time frames.

Consequently, the creative divisional application process is only open to Australian national trade mark applications.

For further information, please contact Lance Scott


[1] s.45(1) Trade Marks Act 1995 (Cth)

[2] s.45(2) Trade Marks Act 1995 (Cth)

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