Intellectual property are creations of the mind and includes certain intangible assets that can be legally owned and protected. A trademark is one of the kinds of intellectual property. As defined in the TRIPS agreement, a trademark can be a sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings. This mark or sign can be in the form of a letter, a number figure, packaging, a combination of colours, figurative elements or even a combination of such signs. The purpose of a trademark is essentially to identify the source or origin of the product, and in extension, it also acts as a guarantee for the nature and quality of the product. In order to register a trademark, an individual or entity is required to file a trademark application. The laws governing the same vary across different jurisdictions, with the registration of an international trademark being governed by the Madrid System. Under the Madrid System a single International trademark application can be filed to secure trademark protection in some or all of the member countries.
The trademark application must contain the class of the goods or services associated with the proposed trademark. A single application can also be filed for registration of a trademark for different classes of goods and services. Here, an important concept that comes into play when discussing trademark applications and the classes of goods and services that are included in them is the division of a trademark application. This article will focus on this concept of division of trademark application and its consequences. When a trademark application is divided, it results in the formation of two separate applications, the original parent application and the new child application. Through this analysis, the article aims to establish the status of a child trademark application after division. Specifically, it aims to highlight the consequences on the status of this child application when the parent application is dead, abandoned or has been rejected.
Benefits of Division of Trademark Applications
There are a number of reasons why holders of trademark applications opt to or are directed to divide the same. For example, as aforementioned, if needed, a single trademark application can be filed for goods or services that fall under different classes. However, one of the problems associated with such a multi-class trademark application is that if an action or an objection has been raised against even a single class, then the registration of the trademark, even for all the other classes, will be halted. It is in such situations that a divisional application can be filed, which allows for the division of a trademark application into two or more separate applications. Such a division is generally opted for in the aforementioned cases where there have been a provisional refusal of trademark application which concerns goods and services only in a few classes. Here, the holder of the trademark can request that the original application, be divided by setting aside the goods and services that have been refused, thus leading to the creation of a new “child” application. After division, the original application is known as the “parent” application. There are also various other reasons trademark holders opt for the division of trademarks. For instance, if the goods and services of an application conflict with another trademark registration, division can be used to separate the non-conflicting products by allowing the child application to move forward. Apart from ensuring that the entire application is not stalled, another benefit of the division process is that it allows the child application to retain the same filing, priority and registration dates.
Division of Trademark Application under Different Jurisdictions
Many countries provide for the division of trademark applications. Under the United States Code of Federal Regulations (Title 37) at any time before registration, an application for division may be filed. This will result in the formation of two separate applications, both having the original filing date. Similar rules relating to division of applications are also provided for under the trademark laws in the United Kingdom. Section 41 of the United Kingdom Trade Marks Act, 1994, refers to provisions to be made for the division of a trademark application. Consequently, the Trade Marks Rules provide for the division of an application for the registration of a trademark (the original application) into two or more separate applications (divisional applications). Here, too, each divisional application are treated as a separate application for registration with the same filing date as the original application. The Australian Trade Marks Act also allows for the division of a trademark application to be made for the registration of the trade mark in respect of some of the goods or services in respect of which registration is sought under the parent application. Similar to other jurisdictions, the divisional application retains the filing date of the original application.
In India, the division of a trademark application is provided for under Section 22 of the Trademarks Act of 1999, which holds that at any time, an amendment to a single application for registration of a trade mark for different classes of goods and services can be made which leads to the division of such an application into two or more applications. Thus, by division of a trademark application, certain goods and services remain in the original trademark application, known as the ‘parent’ application. While the other goods and services are moved to a new application, known as a ‘child application’. Essentially, the division of a trademark involves removing the designated portion from the parent application and assigning it to the new child application.
Over the years, there have been developments in trademark legislations, both at the national and international level, which have affected the division of trademark applications. For instance, on February 1, 2019 the Common regulations under the Madrid Agreement and Protocol for the International trademark went into effect. These regulations introduced Rule 27bis which provided for the division of an International registration for some of the designated goods and services in respect of a designated contracting party, subject to the fulfilment of the requirements under applicable national or regional laws. However, at this juncture, it is important to note that not all countries’ domestic legislation allows such divisions. For instance, Indonesia’s laws do not provide for division of trademark applications. In such jurisdictions, it is recommended that single-class applications be filed, in order to avoid potential delays that may occur if one of the classes faces objection.
Thus, it can be seen that providing for the division of a trademark application is common across many jurisdictions. The rules relating to the same also tend to be similar across the board, apart from certain procedural dissimilarities. One commonality under the aforementioned rules from different jurisdictions is the creation of separate distinct applications after division. From this, we can infer that the status of the child application will not be dependent on the parent. In fact, under Australian trademark law we see that an application for division can be made even if the initial application is pending or has not been accepted. We will look into this aspect in detail in the subsequent section.
Status of Child Trademark Application after Division
When analysing the concept and the process of division of a trademark application, one important question that could arise is regarding the status of a child trademark application if the parent trademark application is dead, abandoned or rejected. For instance, consider a similar situation in cases of division of a patent application. Here, if an application claims more than one invention, then the applicant, either on his own or to meet an official objection on the ground of plurality of invention, may divide the application and file two or more applications, as required for that particular invention. The division application here refers to the patent application that has been divided or separated from the earlier filed patent ‘parent’ application. Even in the case of patents, generally, the priority date for all the divisional applications will be the same as that of the main parent application. However, normally, after the divisional application has been granted it will be subjected to new examination procedures and subsequently new opposition periods which are independent of the outcome of the parent application. Thus, the legal status of the parent patent application will generally not affect the divisional or child patent application.
When we come to division applications under trademarks, this article addresses the aforementioned question, subject to limitations based on available data. In order to answer this question, it is first necessary to understand the relationship between the parent and child trademark application after division. As we have seen, child applications are generally filed based on the pending status of their parent application, that is, they can be filed anytime before the granting or refusal of a trademark. Additionally, the date of filing and priority for the child trademark application is also dependent on the relevant dates of the parent trademark application. For example, Rule 108(3) of the Trademark Rules of 2017 states that for divisional applications, any time limit for an action relating to the initial application will also be applicable to each new separate application that is created by the division, irrespective of the date of division. However, what is imperative to understand at this stage is that such division applications are generally made to ensure that the registration of trademarks of goods and services of a specific class is not stalled or dependent on that of another. Consequently, though aspects such as the filing date of these applications are the same, each new child trademark application is treated as a separate and independent application for the registration of a trademark.
Therefore, taking into consideration certain fundamental aspects relating to the concept of divisional trademark applications, their purpose and consequences, the author is of the opinion that, after division the status of the parent trademark application will not affect the status of the child trademark application. Provided that all the other necessary conditions related to divisional applications are met. This is because they are in essence separate applications for registration of trademarks. As a result, if the parent trademark application is dead, abandoned or rejected, the same should not have any influence on the status of the child trademark application.
This article has been authored by Theertha Aiyappa, a fourth year student at the National University of Advanced Legal Studies (NUALS), Kochi. It is a part of RSRR's Rolling Blog Series.