On June 17, 2019, changes to Canada’s Trademarks Act came into effect, including the introduction of so-called divisional trademark applications. Seven months later on January 17, 2020, the Canadian Intellectual Property Office (CIPO) amended its practice notice on divisional applications, clarifying the procedure for such filings.
Since the amended practice notice, the number of divisional trademark applications filed with CIPO has increased. Divisional applications provide a way forward for trademark applications facing substantive objections from CIPO with respect to only some of the goods or services covered by the application. But until recently, the mechanics for dividing a trademark application were not entirely clear.
Now that CIPO has clarified the divisional application process, trademark applicants should be aware of this new tool. However, applicants should also know that divisional trademark applications create complexity and therefore experienced trademark counsel should be retained to aid in the process.
After a trademark application is filed, it is examined by CIPO to ensure conformity with the requirements of the Act. If the application is deemed to be deficient, the trademark is considered unregistrable or the applicant not the person entitled to register it, then an examiner’s report is issued and the applicant is given an opportunity to respond.
Trademark examiners can raise several objections – for example, that the applied-for trademark is likely to cause confusion with an existing registration, is clearly descriptive or deceptively misdescriptive, or is not inherently distinctive. For all of these objections, examiners should specify whether the objection relates to all or only some of the goods or services covered by the application.
If an objection relates to only some goods or services, then the applicant can separate those goods or services into a new divisional application, clearing the way for the original application (minus the objected-to goods or services) to proceed to registration.
The divisional application, on the other hand, will still be subject to the objection(s) raised in the examiner’s report. The applicant can then respond – for example, by submitting legal arguments – to try to overcome the objections. If this occurs, and the divisional application proceeds to registration, then the original and divisional can be merged back into one registration.
Divisional Application Process
A trademark application can be divided by submitting a response to an examiner’s report, either online or on paper.
The response should include an amended description of goods or services that deletes the goods and services to be divided out. In the additional comments section of the e-filing system, or in attached correspondence, the applicant should specifically set-out the goods or services that have been deleted and that they are to be divided out into a new divisional application.
Once CIPO has processed the filing, it will send the applicant or its agent a notice confirming that the divisional application has been created.
Pros and Cons
By dividing a trademark application, the applicant may be able to secure a registration covering non-problematic goods or services while developing a strategy to deal with the problematic items. This may be useful in a number of situations.
For example, if an examiner objects to an application on the basis that it is likely to cause confusion with a co-pending application, but the objection only pertains to some of the applied-for goods and services, then a divisional application may be beneficial. Once divided, the original application can proceed to registration, while the objection – which now applies only to the divisional application – can be addressed. Legal arguments against a likelihood of confusion could be submitted or an extension of time to respond could be sought, perhaps in hopes that the cited application is abandoned or refused by CIPO. And even if the objection cannot be overcome, the applicant has at least secured a registration covering some of the goods and services.
But there are also drawbacks to divisional applications. First and foremost, dividing an application effectively creates two applications that need to be examined by CIPO and monitored by the applicant, or its agent. This could lead to multiple deadlines, since the original and divisional applications may be examined separately, and there could be additional fees.
The divisional application process creates a mechanism for addressing substantive objections raised by CIPO, without completely stalling an application.
However, the divisional process is only useful when responding to specific kinds of examiner’s reports. Therefore, trademark applicants should discuss their options with an experienced trademark lawyer prior to filing a divisional application.
If you have questions about trademark applications or have filed an application on your own and need help responding to an examiner’s report, please contact a member of the Shift Law team.