If you’ve ever had a trade mark held up due to objections or conflicts over some goods or services, but not the whole application, just part of it, you’ll want to keep reading. Divisional applications can be a strategic lifeline, but they come with specific rules that can trip you up if you’re not careful.

What is a Trade Mark Divisional Application?

A divisional application is essentially a spin-off from an existing or parent trade mark application. Think of it as peeling off some goods or services from your original application and giving them their own separate application.

But here’s the kicker: you can only file a divisional while the parent application is still pending, and the goods or services you want to divide out must be clearly distinct from those staying behind in the parent.

This provision has been in effect in Australia since 27 March 2007, and it’s governed under Sections 45 and 46 of the Trade Marks Act.

When should you file?

Here are the most common situations when one should file-

  • A trade mark conflict- Let’s say part of your application is clashing with someone else’s mark. You don’t want your entire trade mark held hostage. So, you file a divisional for the conflicting goods/services, allowing the parent to proceed to registration.
  • Grounds for rejection- If only some goods/services face objections under Sections 41 (distinctiveness), 42 (contrary to law), or 43 (likely to deceive or confuse), you can split those off and move forward with the rest.
  • Opposition threats- If someone opposes, or even threatens to oppose your application based on only a portion of the goods/services, you can divide them out to prevent delays.

In each case, the goal is the same, i.e. keep your parent application alive and progressing while isolating the problematic part.

The “Some Only” Rule and Why It Matters?

Here’s a golden rule you can’t afford to overlook: the divisional must relate to “some only” of the goods or services. This is where things often go wrong. For example-

Valid Division:

  • Parent application: Class 16- Printed matter
  • Divisional: Class 16- Magazines
  • “Magazines” are a subset of “printed matter,” so the divisional covers some only of the parent goods.

Invalid Division:

  • Parent: Class 16- Printed matter including magazines, newspapers, and books
  • Divisional: Class 16- Printed matter including newspapers and books
  • You’ve technically still claimed the full scope of the parent. No real separation, so it doesn’t qualify as “some only.”

If you don’t meet this requirement, the divisional is invalid, and worse and you won’t get the filing date of the original application.

Timing of application

Another important point, i.e., do not delete or amend the goods or services from the parent application before filing the divisional. I always advise clients to-

  1. File the divisional first.
  2. Wait for it to be accepted.
  3. Only then request the parent to be amended.

Why? Because if you delete the goods too soon, the Registrar could deem your divisional invalid for not being linked to a “pending” parent. Timing here can make or break your filing rights.

What Must a Trade Mark Divisional Application Include?

To be valid under Section 45, your divisional must meet these criteria-

  • The trade marks must be same.
  • The applicant must be the same.
  • The parent must be a single, pending application.
  • The divisional must clearly specify “some only” of the goods/services from the parent.
  • It must state what will remain in the parent.

What Happens to the Parent Trade Mark Application?

Once a valid divisional is filed, Section 46(2) enters. The Registrar must exclude from the parent the goods/services that now belong to the divisional, unless the parent lapses before this can happen. That’s why it’s crucial that the goods/services don’t overlap. If the same goods are found in both the parent and the divisional, your entire strategy may backfire.

Special Cases You Should Know About

A few other things to keep in mind-

  • No divisional applications for IRDAs (International Registrations Designating Australia)– These are not “applications” under Australian law, so Section 45 doesn’t apply.
  • Series applications– You can divide these, but only for “some only” of the goods/services. Each trade mark in the divisional must match one of the series in the parent.
  • Amendments won’t fix an invalid divisional– Once you mess up a divisional filing, it’s tough to patch it. You can’t just amend it under Section 65 to make it valid, it would unfairly broaden your rights.

In rare cases, Section 65A might allow for an amendment due to a clerical error, but you’d need to support that with a declaration and hope the Registrar agrees it’s “fair and reasonable.”

Final Thoughts

Trade mark divisional applications are powerful tools, but they’re not beginner-friendly. I’ve seen them save valuable marks from rejection, delay, or opposition.

If you’re navigating objections or oppositions, don’t rush to delete goods from your application. Talk to a professional about whether a divisional application might be your best move.

Let’s Talk

Want to chat about your trade mark strategy or whether a divisional might help? Reach out, I’m always happy to offer guidance before small hiccups become major headaches.

At our IP firm, we don’t just file trade marks, we help you make smart decisions every step of the way. If you’re considering a trade mark application, or just need clarity on your options, We’re here to help.

Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.

 

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