Taking the divisional route – a trademark perspective

The increasingly crucial role played by intellectual property in the success of a business has compelled individuals and enterprises to take proactive steps towards protecting their IP assets, sometimes even before businesses have taken off. In particular, the past few years have witnessed a remarkable upsurge in trademark filings. However, when an individual or entity decides to file a trademark application, a common dilemma is whether to file a multi-class application or single-class applications for the different classes of goods or services.

There is a general trend among trademark applicants to opt for a multi-class application, as opposed to single class applications for different classes, when seeking trademark registration. As the official fee for each class of goods or services is the same, be it a multi-class application or a single-class application, this inclination must be the result of the convenience that multi-class applications bring about. That being said, multi-class applications have a greater risk of being hindered on account of an office action or third-party opposition. Thus, in general, it may be advisable to file separate applications for each class, despite the inconvenience it may entail.

In fairness, a lot depends on the choice of trademark for which the application is being filed. A multi-class application is best suited for a trademark against which the possibility of an office action or opposition is low to nil, as may be the case in a coined trademark. If a multi-class application faces none of these impediments, then it is the most convenient method of securing registration for a trademark for different classes of goods or services.

For multi-class applications, if an office action has been issued only in respect of one class or if the relevant trademark has been opposed only for one class, the registration for other classes will remain pending until the objection raised under the office action has been overcome or the opposition proceedings have culminated. However, this may be remedied by taking the route of divisional application.

When faced with the obstacle of an office action or opposition against certain but not all classes, the applicant can divide the multi-class application. For example, if an application has been filed for four classes (ie, Classes 6, 19, 21 and 35), and an opposition is subsequently filed against the application but only in respect of Class 6, then the entire application, even in respect of Classes 19, 21 and 35, will be kept in abeyance until the opposition proceedings have concluded. In this situation, the applicant can divide the multi-class application to segregate Class 6 from Classes 19, 21 and 35 so as to allow the unopposed classes to proceed towards registration. As a result, a new application number will be allotted for the unopposed classes as a separate multi-class application, while the Class 6 application will retain the original number.

For all intents and purposes, the applications will be treated as two separate applications. Moreover, the new application retains the date of filing of the original multi-class application. Under the newly enforced Trademarks Rules 2017 ‒ which have drastically changed the landscape of official forms ‒ an application can be divided by way of filing Form TM-M.

Divisional application allows applicants to escape an inevitable delay, which is the obvious by-product of protracted proceedings like opposition. Further, in the event that the decision in the office action or opposition proceedings is rendered against the applicant, the other classes which have been segregated by way of division will not be affected.  Thus, divisional applications can be employed as an efficient tool, specifically for applicants seeking to register trademarks which are likely to face office action or opposition.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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