Publication date: June 17, 2019
Amendment date: January 17, 2020, October 28, 2020
This notice is intended to clarify the practice of the Trademarks Office with respect to divisional applications and the merger of registrations.
Definitions
An "original application" is an application for the registration of a trademark which has been limited under subsection 39(1) of the Trademarks Act (the Act) for the purpose of filing a divisional application.
A "divisional application" is an application for the registration of a trademark which covers some or all of the goods or services which were limited from an original application. A divisional application itself can also be divided, whereupon it becomes an original application for the divisional application derived from it.
An "original Protocol application" is a Protocol application that has been limited under section 123 of the Trademarks Regulations (the Regulations) for the purpose of filing a divisional Protocol application.
A "divisional Protocol application" is a Protocol application which covers some or all of the goods or services which were limited from an original Protocol application. A divisional Protocol application itself can also be divided, whereupon it becomes an original Protocol application for the divisional Protocol application derived from it.
A "divisional international registration" is an international registration in respect of Canada that has been subject of a division under section 123 of the Regulations. A divisional international registration can be merged with the international registration from which it was divided.
Why make a Request
An applicant may choose to file a divisional application for various reasons, which include, but are not limited to, the following:
- if a confusion objection is raised in respect of particular goods or services of an application, the applicant may decide to divide out those goods or services so that portion of the application can proceed to advertisement;
- if a clearly descriptive objection has been raised or maintained in relation to some of the goods or services of the application, the applicant may wish to divide out the impugned goods or services so that the original application can proceed to advertisement; or
- if an opposition is filed against an application, the applicant may divide out some of the goods or services to allow the original application to proceed to registration.
Making a Request
Domestic application
Under section 39 of the Act, an applicant may limit an application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark. An applicant may also divide a divisional application, in which case section 39 of the Act applies as if that divisional application were an original application.
A divisional application may only be filed if the original application is active (i.e. not abandoned, refused, or registered).
When filing a divisional application, the applicant must reference the application number of the original application, if known, and clearly indicate that it is a divisional application.
The scope of the goods or services that can be divided will depend on where the application is in the registration process. If the original application has not been advertised at the date the divisional application is filed, the goods or services that can be divided must be within the scope of the original application on its filing date. If the original application has been advertised, the goods or services that can be divided must be within the scope of the original application on the day on which the divisional application is filed.
A divisional application is considered a separate application, including with respect to the payment of any fees. However, if the prescribed fees for an application for the registration of a trademark have been paid on the original application, they are considered to have been paid on any divisional application. As well, the divisional application's filing date is deemed to be the original application's filing date.
The Registrar will send the applicant a notice confirming that the divisional application has been created.
As there is currently no dedicated e-service for filing a divisional application, applicants have two options:
- Amend the original application through the e-amend online service for trademarks by limiting the goods or services and, in the closing details of the application, indicate that the applicant wishes to file a divisional application, specifying which of the goods and services should appear in the divisional application; or
- File on the original application, either by mail, fax, or through the General Correspondence online service for trademarks, a request to file a divisional application, specifying which of the goods and services should be limited on the original application and which should appear in the divisional application.
International - Protocol application
Under section 123 of the Regulations, the applicant in respect of a Protocol application may also limit the original Protocol application to one or more of the goods or services that were within its scope. To do so, the applicant must file with the Registrar, for presentation to the International Bureau of the World Intellectual Property Organization (the International Bureau), a request for the division of the international registration in respect of Canada. It is also possible to divide a divisional application itself, in which case section 123 of the Regulations applies as if that divisional application were an original Protocol application.
Despite paragraph 123(2)(a) of the Regulations, there is currently no online service designated by the Registrar for the purpose of filing a request for the division of the international registration in respect of Canada. In accordance with paragraph 123(2)(b) of the Regulations, the request for the division must be filed using the form issued by the International Bureau, in either English or French, and sent to the Registrar of Trademarks by fax at 819-953-2476.
The request must indicate:
- the number of the international registration on which the original Protocol application is based;
- the name of the holder of that international registration,
- the name of the goods or services to be set apart, grouped according to the classes of the Nice Classification;
- the amount of the fee being paid to the International Bureau and the method of payment, or instructions to debit the required amount to an account opened with the International Bureau; and
- the name of the person effecting the payment or giving the instructions.
The scope of the goods or services that can be divided will depend on where the Protocol application is in the Canadian registration process. If the original Protocol application has not been advertised at the date the divisional application is filed, the goods or services that can be divided must be within the scope of the original Protocol application on its filing date. If the original Protocol application has been advertised, the goods or services that can be divided must be within the scope of the original Protocol application on the day on which the divisional application is filed. In both cases, the goods or services will need to be within the scope of the international registration in respect of Canada on the day on which the request to divide is filed.
Once the request is received and all the requirements are met, the Registrar must send it to the International Bureau. When the International Bureau notifies the Registrar of the creation of a divisional international registration in respect of Canada, only then will the applicant be deemed to have filed a divisional application for the registration of the same trademark and in respect of the same goods or services that are listed in the divisional international registration in respect of Canada.
Steps deemed to have been taken
Subject to the exceptions listed in paragraphs 40(a) and (b) of the Regulations, any action taken in respect of the corresponding original application or original Protocol application, up to and including the day on which the divisional application is filed, is deemed to be an action taken in respect of the divisional application.
For example:
- if an examiner's report has issued on the original application before a divisional application was filed, the deadline to respond to the report will also apply to the divisional application and the Office will not re-issue a new examiner's report;
- if a transfer has been requested on the original application before a divisional application was filed, but could not be processed due to missing information, the transfer will be deemed to have been requested on the divisional application. Once the missing information has been provided, the request will be processed on both the original and divisional applications. Please note that the prescribed fee for the recording of the transfer will have to be paid on each divisional application. To find out the exact amount of the fee, please consult the list of fees for trademarks.
After Advertisement
An application may also be divided any time after advertisement but before registration, including during the two-month period following advertisement, any extended opposition period and after the filing of a statement of opposition, so long as the goods and services divided out are within the scope of the original application on the day on which the divisional application is filed (see paragraph 39(1)(b) of the Act). Please refer to the Practice Notice published by the Trademarks Opposition Board entitled "Divisional Applications in Opposition" for more information on dividing an application after the application has been opposed.
Applications filed prior to CIF
Applications filed prior to the coming-into-force of the amended Act can be divided. For more information on the applicable registration fee, please refer to Part 3 of our Guide to Transitional Provisions.
Merger
Domestic registration
Under paragraph 41(1)(f) of the Act, if a trademark that is the subject of an application that has been previously divided proceeds to registration, it may be merged with other registrations of the trademark that stem from the same original application and where the trademarks are the same and have the same registered owner.
A request for the merger of domestic registrations may be submitted by mail or through the General Correspondence online service for trademarks. There is no fee for this service.
International - Protocol registration
Section 134 of the Regulations allows the holder of a divisional international registration in respect of Canada to file with the Registrar a request to merge the divisional international registration with the international registration from which it was divided, if all of the Protocol registrations stem from the same original Protocol application, they relate to the same trademark and their registered owner is the holder of the international registrations.
Despite paragraph 134(2)(a) of the Regulations, there is currently no online service designated by the Registrar for the purpose of filing a request to merge the divisional international registration with the international registration from which it was divided. In accordance with paragraph 134(2)(b) of the Regulations, the request for merger must be filed using the form issued by the International Bureau, in either English or French, and sent to the Registrar of Trademarks by fax at 819-953-2476.
The request must indicate:
- the number of each of the international registrations to be merged;
- the name of the holder of those international registrations.
Once the request is received and all the requirements are met, the Registrar must send it to the International Bureau. When the International Bureau notifies the Registrar of the merger of a divisional international registration in respect of Canada into the international registration from which it was divided, the Registrar will amend the register to merge the corresponding Protocol registrations.
Application to extend the statement of goods or services
Applications filed under subsection 41(2) of the Act to extend the statement of goods or services in respect of which a trademark is registered may be divided. However, upon registration, the divisional application will be merged automatically with the original registration it was intended to extend and not the original application it was divided from.
In the case of an application in respect of a registered trademark that is a word mark or a distinguishing guise, the divisional application should, at the time of filing, include a statement under paragraph 31(b) of the Act to the effect that the applicant wishes the trademark to be registered in standard characters or paragraph 31(e) of the Regulations that the trademark consists in whole or in part of a three-dimensional shape or mode of packaging goods, as applicable. Consideration should be given to paragraph 35(2)(e) of the Regulations since it will only be permissible to add or delete these statements if the application has not been advertised and the trademark remains substantially the same.
Moreover, when a divisional application which stems from an original application to extend the statement of goods or services in respect of which a trademark is registered under subsection 41(2) of the Act proceeds to registration and is merged automatically, the Office will change the “type” of the registered trademark to a standard character, a three-dimensional shape or a mode of packaging goods, as applicable.
Pending assignment
Should there be a pending transfer of any of the registrations that stem from the same original application, the request to merge will only be processed once the transfer is registered to ensure that all registrations are in the name of the same registered owner.