Divisional Application

An examiner has raised an objection, perhaps a conflict with a prior mark or a query about distinctiveness, but it only applies to some of your goods. This is a common and frustrating scenario. Does this one issue mean your entire application must be put on hold, delaying the registration of your brand for all your other, non-problematic goods?

The answer is no. You have a powerful, strategic option available, i.e. a divisional application.

What is a Divisional Application?

A divisional application is a formal request to split a single trade mark application (the “parent”) into two or more separate cases. The new, separated application is called the “child” application.

The single most important benefit of this procedure is what the “child” application inherits, i.e. it retains the original filing date, priority date, and (if applicable) registration and renewal dates of the parent application.

This is the key to the entire strategy. Your “priority date” is your place in line, and it is the most valuable asset of your application. By using a divisional application, you do not lose your place in line for the goods or services you separate.

This procedure, governed by Regulations 49-53 of the Trade Marks Regulations 2003, is a technical process that our firm manages on your behalf. There is no official fee for filing the request to divide, making it a highly effective and economical solution to a complex problem.

When should you opt for a Divisional Application?

We typically recommend filing a divisional application in three key scenarios, all of which are designed to achieve one goal: efficiency.

• To Overcome a Conflict (Citation). This is the most common reason for division. Imagine you file for your new brand “ELOP’S CHOICE” in Class 25 for “clothing, footwear, and headgear.” The examiner finds a prior-ranking mark that is likely to be confused with yours, but it is only registered for “footwear.” Instead of fighting a costly legal battle over “footwear” and delaying your rights for “clothing” and “headgear,” we can file a divisional application. We strategically move “footwear” into a new “child” application. The “parent” application, now only covering “clothing and headgear,” is free of the conflict and can proceed immediately to acceptance.
• To Isolate a Substantive Objection. The objection may not be a conflict, but a problem with the mark itself. For example, you file for “clothing, footwear, headgear and toys” in Class 25. The examiner objects, stating that “toys” are incorrectly classified and belong in Class 28. Or, perhaps you have filed for “Natural” in a class for “cosmetics” and “consulting services,” and the examiner objects that the mark is not distinctive for “cosmetics” but is distinctive for “consulting services.” In both cases, we can divide the “problem” goods or services (the “toys” or the “cosmetics”) into a new “child” application. This allows the “parent” application with the “clean” goods to proceed, while we focus on resolving the objection in the child application without holding your entire brand hostage.
• To Manage an Opposition. If your application has been accepted, but a competitor files (or threatens to file) an opposition against it, division is a powerful settlement tool. If the opponent is only concerned with some of your goods (e.g., they oppose your application for “wine” but do not care about “spirits”), we can negotiate with them. With their consent, we can divide the contested “wine” goods into a child application, which can be the subject of the opposition proceeding. This allows the parent application for “spirits” to proceed immediately to registration, securing your rights for the non-contentious part of your business.

The Scope of Division

A divisional application is a flexible tool. We can use it to separate your original application in three different ways-

• Specific Goods and/or Services: This is the most common use. We can divide out specific items from a list of goods within a single class (e.g., splitting “toys” from a list in Class 25).
• Entire Classes: If you filed a multi-class application, we can divide out one or more entire classes into a new application.
• Marks in a Series: If you filed for a series of marks (e.g., three different logos) and one of them receives an objection, we can divide that single problematic mark into a child application, allowing the other marks in the series to proceed.

How We Manage the Divisional Process?

When you face an objection that can be solved with division, our firm handles the entire procedure.

The core strategy is to ensure the “parent” application is the one that proceeds to registration. This means the “parent” application must be the “clean” one.

Using the “ELOP’S CHOICE” example for “Toys” (Class 28), “Meat” (Class 29), and “Mice” (Class 31), where the objection is only against “Toys”:

• We file the formal divisional request. This request must create a “parent” and a “child”.
• We edit the “parent” application to remove the problem goods. In this case, we would edit the “Original Trade Mark” specification to delete “Class 28: Toys”. The parent application now only contains the “clean” goods: “Class 29: Meat” and “Class 31: Mice”.
• We then edit the “child” application (the “Divided Trade Mark number 1”) to contain only the problem goods. We would delete “Class 29: Meat” and “Class 31: Mice,” leaving only “Class 28: Toys”.
• Once this is processed, the parent application is now free of any objections and can proceed to acceptance and registration. The child application for “Toys” is given a new application number, but it keeps the original filing date. We can then focus on resolving the objection for that specific application on its own timeline.

Critical Traps We Help You Avoid

The divisional process is technical, and several rules must be followed. Attempting this without expert guidance can lead to your request being rejected.

• You Cannot Divide Out Everything: You cannot move 100% of the goods, services, or marks from the parent to the child. This is not a division; it is an attempt to re-file your application, and it is not allowed.
• You Cannot Divide What You’ve Already Deleted: A divisional application can only be filed for goods or services that are currently in the specification. If you have already amended your application and deleted the problematic goods, you cannot use a divisional application to bring them back. This is why it is critical to seek advice before making any amendments.
• You Cannot Use Division to Avoid Fees: This is a crucial rule. If you filed for “toys” in Class 25 and did not pay the fee for Class 28, you cannot simply divide out “toys” into a new application and get a “free” class. Regulation 53 prevents this. We would first need to file a separate request to “add a class” (and pay the associated fee) before we could then divide that new class out.
• You Cannot Change Ownership: The applicant for the parent and child application must be identical. We ensure all your details are consistent before filing the request.

Why work with us?

A divisional application is one of the most effective and valuable tools in trade mark prosecution. It transforms a complex, application-wide problem into a smaller, more manageable one. It allows you to secure your rights for your core, unencumbered goods or services quickly, while isolating the problem to be dealt with separately.

If your trade mark application is facing an objection for only some of its goods, do not let it delay your entire brand. Contact our firm today. We can analyze the objection and advise if a divisional application is the right strategy to get your mark to registration faster.