Proposed Changes to Divisional Trade Mark Applications in Australia

Changes to the Common Regulations approved in October 2016 by the Madrid Union, which are due to come into force on 1 February 2019 relate to the filing of divisional applications based on International Registrations.

 

At the present point in time, it is possible for parties filing domestic Australian trade mark applications to file divisional applications.  However, it is not possible for a party who has filed an International Registration designating Australia (IRDA.), to file a divisional application on the basis of that IRDA. Following changes to the Common Regulations, Australia will have an obligation under its international commitments to permit the filing of divisional applications based on IRDAs.

As a consequence, a discussion paper has been released concerning proposed amendments to Australia’s legislation. The discussion paper deals with:

  • proposed allowance of divisional applications based on IRDAs and amendments relating to divisional applications filed on the basis of domestic applications; and
  • the possibility of permitting divided applications to be merged back into their parent resulting in a single application or registration.

At present, the filing of domestic divisional applications can be used by applicants to extend the life of their application indefinitely.  This avoids the ongoing official fees associated with obtaining extensions of time, and the risk of potential refusal. Under Australian legislation, a divisional application can be filed for some of the goods and/or services specified in the parent application and the new divisional application has the same time period for responding to the Examiner’s objections as a new application. As 15 months is allowed for applicants to overcome objections, filing a divisional application allows a significant extension to the life of an application and can be more cost effective than seeking extensions of time. Further, it is possible for applicants to file divisional applications based on divisional applications, and retain the priority date of the original parent.

Under the proposed amended legislation, a divisional application of either a domestic application or an IRDA would have the same status as the parent application. In other words, the existing objections to registration would apply and the deadline for acceptance would be the same as the deadline of the parent application. This would remove the advantage sometimes obtained by filing a divisional of a domestic application, which effectively defers the acceptance deadline by more than 15 months.

Divisional applications need to ensure that goods and/or services in the divisional application are excluded from the parent application. In the past, this has caused difficulties for some applicants in construing the scope of descriptions used in the parent and proposed divisional application, even though the problem of overlap should be fairly readily avoided where suitable care is taken.  IP Australia is considering ways to simplify the process so as to reduce the difficulties encountered by some.

At the present time, IP Australia is calling for submissions so as to undertake further consultation with a view to assessing the benefits and costs, and any potential problematic scenarios that may arise from the proposed changes to its processes for dealing with divisional applications.

Although changes to the Common Regulations will allow the holder of a divisional of an International Registration to request that it be merged with its parent, this only applies to countries that currently allow this for domestic applications.  As it is not offered in respect of Australian domestic local applications, Australia has no obligation to offer this option.

While not obliged to change our legislation, IP Australia accepts that there may be some benefits to portfolio management from the merging of divisional and parent applications or registrations, although it has doubts as to whether this is something that would be widely used by applicants. Consequently, it has invited feedback from stakeholders on this issue, and will consider any other observations stakeholders wish to make.

This article by Shelston IP Principal, Sean McManis, first appeared in World Trademark Review, October 2017.