3. Conditions for a valid divisional application

Sections 45 and 46 set out the conditions that must be met 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 filing date will be the day on which the divisional application was filed, not 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’.

Example of ‘some only’:

Examples of not ‘some only’:

3.2 Parent application is pending

One of the requirements under s 45 (1) for a valid divisional application is that the parent application was pending at the time that the divisional application was made. According to s 11(1), an application is pending from the time it is filed until:

(a) it lapses (see sections 37 and 54A), is withdrawn (see section 214) or is rejected (see section 33); or

(b) if the Registrar refuses (under section 55) to register the trade mark and there is no appeal against the decision—the end of the period allowed for the appeal; or

 (c) if the Registrar refuses (under section 55) to register the trade mark and:

(i) there is an appeal against the decision; and

(ii) the decision is confirmed on appeal; 

—the day on which the decision is confirmed on appeal; or

(d) the trade mark is registered under section 68.

Note: For file see section 6.

Whether the parent application was ‘pending’ at the time the divisional application was made depends on the legal status of the parent on the relevant date according to section 11(1), which may not have matched the status shown in Australian Trade Mark Search (ATMS) or RIO Search on that day. For example, an application may still show as ‘pending’ in ATMS after the acceptance due date has passed, but if no extension of time is granted, it will be taken to have lapsed after the acceptance due date. The relevant date will be shown in RIO Search and ATMS as either the acceptance due date, or if the trade mark has already lapsed, the lapsed date. 

The table below provides more information:

3.3 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. It is not necessary to exclude from the parent goods and/or services which the applicant removes from the divisional application between the time the divisional is filed and the parent is amended. 

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. Once the parent application has lapsed, exclusion is unnecessary.

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:

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3.4 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.

3.5 Divisional provisions do not apply for International Registrations Designating Australia

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

3.6 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.

• Part 13.8 Divisional Applications from Series

3.7 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 published for the purposes of opposition.

Note:  If the divisional application is otherwise valid (see Annex A1), an amendment can be made under section 65(7) to the divisional application, the parent application, or both, to give effect to section 46(2) and render the claims complete.