Document Actions
5. Examination
Note: This is the print view with all the Document pages on one page. The paginated version is available here, if you prefer that.
5.1 Application details
The details of the proprietor of the trade mark application must be identical to those of the proprietor of the application for division. An application for division will not be accepted if there is a discrepancy between the proprietor details of the two applications.
The details of the agent of the trade mark application must be identical to those of the agent of the application for division, if any. An application for division will not be accepted if there is a discrepancy between the agent details of the two applications.
An application for division will not be accepted if the mark has been registered or if the trade mark application has been refused, withdrawn or abandoned or is no longer “active”.
5.2 Division of part of a series
An applicant for the registration of a trade mark may apply for division from the application of one or more marks that were the subject of the initial trade mark series application.13
An application for the division of a series will not be accepted if:
- The original marks did not constitute a series; or
- The application for division is not in respect of the same classes and goods and services as in the trade mark application.
An application for the division of a series will not be accepted for all of the marks in the series in the trade mark application. An application to divide out all of the marks in the series would amount to a re-filing of that application.
Footnote
13 Regulation 49(a) of the Trade Mark Regulations 2003.
5.3 Division of classes
An applicant for the registration of a trade mark may apply for division from the application of one or more of the classes specified in the trade mark application.14
An application for the division of one or more of the classes will not be accepted where the application for division is not in respect of the same mark or series of marks as in the trade mark application.
An application for the division of a trade mark application will not be accepted for all of the classes in the trade mark application, where those classes include all of the goods and services in the initial application. An application to divide out all of the classes and goods and services in the trade mark application would amount to a re-filing of that application.
An application for the division of an application will not be accepted if the class or classes being divided out are not in the specification of the trade mark application, at the time the application for division is filed. Division may only be in respect of the class or classes that remain in the specification at the time the application for division is filed.
Footnote
14 Regulation 49(b) of the Trade Marks Regulations 2003.
5.4 Division of goods and services
An applicant for the registration of a trade mark may apply for division from the application of some of the goods and services specified in the trade mark application.15
An application for the division of some of the goods and services will not be accepted where the application for division is not in respect of the same mark or series of marks as in the trade mark application.
An application for the division of a trade mark application will not be accepted for all of the goods and services in the trade mark application. An application to divide out all of the goods and services in the trade mark application would amount to a re-filing of that application.
An application for the division of an application will not be accepted if the goods and services being divided out are not in the specification of the trade mark application, at the time the application for division is filed. Division may only be in respect of the goods and services that remain in the specification at the time the application for division is filed.
Footnote
15 Regulation 49 (c) of the Trade Mark Regulations 2003.
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 services will 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 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.
5.6 Amendment
An applicant for division may apply to amend the details in the application for division. The details of an application for division will not be amended where the amendment extends the applicant's rights as prescribed in the initial trade mark application.
