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

Date Published

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:

Parent before division

Class 16: Printed matter

Divisional

Class 16: Magazines

Comments

The parent has a claim for printed matter which would include magazines and other items such as books, pamphlets, brochures etc. The divisional is for magazines – a particular type of printed matter. Therefore the divisional is for ‘some only’ of the printed matter claimed in the parent. This means that the divisional application meets the ‘some only’ requirement of section 45(1).

Examples of not ‘some only’ include:

Parent before division

Class 16: Printed matter including magazines, newspapers and books

Divisional

Class 16: Printed matter including newspapers and books

Comments

Whilst the wording in the divisional has removed magazines, it still has a broad claim for printed matter that would include magazines. This means all the goods present in the parent are also present in the divisional and therefore the divisional application does not meet the ‘some only’ requirement of section 45(1).

Therefore this is an invalid divisional application.

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:

Division specified

Goods to remain in parent

Divisional


Class 16: Printed Matter

Class 16: Magazines

Comments

The goods claimed in the divisional (magazines) are encompassed by the goods to remain in the parent (printed matter).

If parent application has not lapsed the applicant may:

  • further restrict the goods of parent to exclude magazines

OR

  • agree to delete all references to a divisional and forgo the earlier filing date

​​​​​​​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.

Amended Reasons

Amended Reason Date Amended