IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications. The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.

Filing divisional applications from IRDAs

The Trade Marks Act 1995 (Cth) (Act) allows a trade mark application filed in Australia (the “parent” application) to be divided into a “divisional” application (or “child”) which specifies a subset of the goods or services specified in the parent. The child has the same priority date as the parent, but is otherwise treated as a new application. Filing divisional applications is a common practice in Australia, as they allow an applicant to separate goods/services for which an adverse examination report has been issued from goods/services which are “clear”.

However, the Madrid Protocol (the international system which allows for IRDAs) does not currently allow international registrations to be divided, meaning that it is not possible to file a divisional application from an IRDA. This means an Australian application filed as an IRDA is treated differently than if the application was filed directly in Australia. Changes to the Common Regulations (which govern the Madrid Protocol) to allow international applications to be divided will come into force on 1 November 2019, and the Paper proposes amending the Act accordingly. This development (although still some way off) will be good news for filers of IRDAs.

Acceptance deadlines

Currently, divisional applications are examined and given a new 15 month period in which to overcome issues raised in examination. The proposal is however, that a divisional Madrid application will “inherit” the status of its parent, including the acceptance deadline, without requiring re-examination. IP Australia proposes taking the same approach to applications filed domestically to ensure consistency. This would prevent trade mark filers from using divisional applications as a means to effectively extend the acceptance deadline for their applications without losing the priority date of the parent.

The paper discusses further amendments to the existing regulatory regime, such as the potential to “merge” a divisional child back into its parent if both are accepted or registered.

Submissions in response to the Paper are due by 17 November 2017.

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