Clancy PC, Intellectual Property Law, Paula Clancy, Trademarks, Canadian IP, @CanadianIP, IP
By Trish Sawhney
In Canada, once you have filed a trademark application, it is examined by CIPO to ensure that it meets the registrability requirements set forth in the Trademarks Act. If an Examiner objects to the application, a formal Office Action will issue.
If objections are raised, the Examiner must state whether the objection pertains to all or some of the goods or services used in association with the mark. In the case the objection only pertains to some of the goods/services, Applicants now have the option of filing a divisional application. This essentially divides the original application into two – the original application and the divisional application.
The goods or services that were not objected to stay in the original application and can proceed to the next steps of prosecution, whereas the goods or services that were objected to are removed to form the second divisional application, which has the same filing date as the original and proceeds through prosecution on its own.
An application may also be divided during opposition proceedings. If an Opponent has objected to some of the goods or services in the subject application, the Applicant can use a divisional application to move certain goods or services forward to registration, while the opposition continues for the contested goods or services.
Once a divisional application has proceeded to registration, provisions of the Trademarks Act allow it to be merged with other registrations of the trademark that stem from the same original application. So, unlike the orange in the picture above, divisional applications can be put back together. Tasty, right?
If you are interested in learning more about divisional applications or are curious if your trademark application would benefit from being divided, contact us!
Clancy PC, Intellectual Property Law, Paula Clancy, Trademarks, IP