3. Conditions for a Valid Divisional Application Filed on or After 27 March 2007

Section 45 and 46 set out the conditions that must be met in order to file a valid divisional. These are:

• 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.

If the divisional application meets all of the above requirements it is a valid divisional. Annex A1 of this Part contains a divisional checklist as an aid to determine if a divisional application is valid.

If the divisional application does not meet all of the above requirements it is an invalid divisional. This means that the application will not have the filing date of the parent. In this situation, the goods or services of the parent application should not be amended unless specifically requested by the applicant.

3.1 Some only requirement

A divisional application must be for ‘some only’ of the goods/services of the parent.

If every good and/or service claimed in the parent (at the time the divisional was filed) is encompassed by the divisional, this is not ‘some only’.

Examples of ‘some only’ include:

Examples of not ‘some only’ include:

3.2 Section 46(2) – exclusion of goods and services

If a divisional application is considered valid, section 46(2) requires the Registrar to, unless the parent application has since lapsed, amend the parent application by excluding the goods and/or services in respect of which the divisional application is made.

Note: Section 204 requires the Registrar, where no time or period is specified for doing a thing, to do the thing as soon as practicable. However, it is possible that a parent application will lapse before it is practicable for the Registrar to amend it under subsection (2) of this section.

Problems will therefore arise if the goods or services of the divisional are duplicated in, or encompassed by, those specified to remain in the parent.

It should be noted that the exclusion step is not the same consideration as for goods/services being of the same or similar description. The goods/services being divided out and those being left in the parent can be similar, but they cannot include the same goods/services.

Examples of where the goods/services of the divisional are duplicated in or encompassed by those specified to remain in the parent include:

​​​​​​​3.3 Revived parent application

If the parent application has lapsed there is no requirement for its goods and/or services to be amended. However, if the parent application is subsequently revived, the examiner of a valid divisional application must ensure that the goods and/or services of the divisional are excluded from the goods and/or services of the parent.

3.4 Divisional provisions do not apply for International Registrations Designating Australia

A divisional application may not be filed for International Registrations Designating Australia (IRDAs). Section 45 and 46 refer to divisionals being made in respect of applications for registration. An IRDA is a request for protection in Australia and not an application for registration.

3.5 Divisional and Series applications

Divisional applications may be filed for some only of the goods and/or services of a series application. The divisional trade mark/s must be the same as the trade mark/s appearing in the series parent at the time of filing the divisional.

3.6 Divisionals and Amendments

If a valid divisional application has not been filed a section 65 amendment cannot be made to the divisional application in order to make it valid. This is because such an amendment would extend the rights the applicant would have if registration were granted.

In some cases an amendment to the application under section 65A may be possible because of a clerical error or obvious mistake, but this may need to be supported by a declaration.  If the Registrar considers that a case for clerical error or obvious mistake is made out, and that it is fair and reasonable in all the circumstances to make such an amendment, the proposed amendment will be advertised for the purposes of opposition.