2. Why file a Divisional application?

Date Published

An applicant may choose to file a divisional application for several reasons including, but not limited to, the following:

  • if the goods/services of the parent application are in conflict with another trade mark application or registration, the applicant may decide to exclude the conflicting goods/services from the parent application so that the parent application can proceed to acceptance; or

  • similarly, if only some of the goods/services of the parent application have attracted a ground for rejection under sections 41, 42 or 43, the applicant may decide to exclude the goods/services which have attracted the ground for rejection from the parent application, so that the parent application can proceed to acceptance; or

  • if an opposition is filed or threatened, the applicant may also decide to exclude the conflicting goods/services to allow the parent application to proceed to registration.

In any of the above cases the applicant may decide to file a divisional application for goods/services which are to be excluded from the parent application.  The parent application must be pending at the time the divisional application is filed and the goods/services of the divisional application must still be present  in the parent application at the time of filing.

If submissions are received requesting the deletion of certain goods/services from an application that also state that a divisional application is to be filed from that application, any deletion or amendment to the specification of goods/services should be delayed until such time as the divisional application has been filed. Premature deletion or amendment of the goods/services of the parent may invalidate a subsequent divisional application. The goods/ services to remain in the parent must be nominated as part of the filing of the divisional application.