5.5 Striking out goods and services

Where an applicant is given the option of striking out items from a specification to allow the application to proceed to acceptance, they may apply to divide out the non-offending items instead.

However, an application for the division of some of the classes or goods and/or services may not be accepted where there is an outstanding application fee for the class or classes of the items divided out.¹⁶ Regulation 53 prevents an applicant from dividing out goods and/or services or a whole class from a trade mark application and creating a new application without paying a further fee.

An applicant may wish to divide out some goods or services or classes that are not the subject of a concern in a Compliance Report to proceed to acceptance. For example, a trade mark application may be filed in class 25 for “clothing, footwear, headgear and toys”. Where a concern has been raised in a Compliance Report based on “toys” being correctly classified in class 28, the applicant may divide out “clothing, footwear and headgear” from the application to allow these goods to proceed to acceptance. However, the application for division in the above example will not be accepted if the applicant has only paid one fee in class 25 and there is an outstanding fee in class 28.

Footnotes

¹⁶ Regulation 53 of the Trade Marks Regulations 2003.