Introduction
A single application can be filed to register a trademark for more than one classification of goods and services. The procedure of dividing a trademark application expedites the examination and registration process, especially when multiple classes of goods or services are concerned.
In India, the division of a trademark application is permitted under Section 22 of the Trademarks Act of 1999, which states that a revision to a single application for registration of a trademark for different classes of goods and services results in the division of such an application into two or more classes. Thus, by dividing a trademark application, certain goods and services are retained in the original trademark application, known as the 'parent' application. The remaining goods and services are transferred to a new application known as a 'child application.' The division of a trademark entails removing the specified portion from the parent application and assigning it to the new child application.
Why Division of Application is Required?
The registration of a multiple-class application will be interrupted if the Trade Mark registry has taken any action against the application even if one class is the subject of such action or if any third party has raised any opposition against the application for a particular class. Therefore there are high chances of risk for the applicant in filing multiple- class application.\
A division of trademark application may be required in the following circumstances:-
1. If any applicant wants each class of the multi-class application to be examined separately, then they can request a division of the application. This ensures that each class is assessed and processed individually.
2. In case the Trademark Registry raised any objection against the multi-class application for a particular class of goods or services, the applicant may request to divide the application and proceed with the objected classes separately from those that have cleared the examination stage.
3. In case any third party has filed the opposition against the multi-class trademark application targeting a particular class of goods or services, the applicant may apply for division of the trademark application to protect and expedite the registration of the trademark in respect of other classes of goods or services.
Pre-requisites and Considerations for Division of Application
When dividing an application, the original application's priority date (filing date) will be retained for each division of the application. The trademark's priority remains unaffected by the division process.
The applicant must submit a request before the Trademark Registry for the division of the application through filing a TM-M form, along with the required fee. The request must specify which categories of goods or services are being divided.
Applicants must make sure that each division of the application clearly indicates the relevant classes and that the trademark is distinguishable and non-conflicting across the divided classes.
Conclusion
The division of trademark application is a prominent way for applicants who sought to simplify the trademark registration procedure in order to work effectively with several classes of goods and services. Applicants can speed up the progress of the trademark registration process, resolve objections independently, and assure that each class of goods or services is properly protected by classifying their application. To guarantee that all classes are examined fairly and that their rights are upheld, it is crucial to carefully follow the process and make sure that the legal requirements are met. For this reason, it is strongly advised that a multi-class application be submitted only when the applicant is certain that there is no possibility of objection or opposition from any third party, though it is difficult to determine at the time of filing of the application. Hence, it is beneficial to submit separate applications for each class.
India: +91-1141 8355 50