A trademark divisional application is often filed when the applied trademark is partially refused on the part of the designated goods/services. The divisional application aims to divide the original application into two, of which the approved application can be published for opposition first, and the refused part will be independently reviewed if the applicant files an appeal.  

Trademark partial refusal

A partial refusal of the trademark application is usually based on the relative grounds of prior similar trademarks. Since the examination of trademark similarity is in accordance with the classification of goods/services, a trademark can be refused on the part of the designated items where the conflicting trademarks are applied or registered. If the applicant does not file an appeal to respond to the partial refusal, the trademark application will be published only on the initially approved items, and the refused part will be dead. If an appeal is filed for a trademark review without a divisional application for the approved part, the whole application will be pending until the decision of trademark review comes out.

Divisional trademark application

According to Article 22 of Regulation on the Implementation of the Trademark Law, where the Trademark Office refuses an application for trademark registration on the part of the designated goods, the applicant may file a divisional application for the part which has been granted initial approval, and the date of application of the divisional application shall be the same as that of the parent application.

After a partial refusal, the trademark review of refusal usually takes 9 to 12 months from appealing to the issuance of a decision from CNIPA. During the review stage, the application on the approved items cannot proceed with the trademark publication and registration if the applicant does not initiatively apply for a division. The regulation of article 22 provides the applicant with an approach to get the registration on the approved items first to avoid delay of registration by the appeal. The application date remains the same as the original application, and the application number will be added with an “A” following the original one.  

Time limit

According to paragraph 2 of Article 22 mentioned above, the applicant shall file an application for division with the Trademark Office within 15 days of receipt of the Notice on Partial Refusal of a Trademark Registration Application. So, the time limit to apply for division is the same as that of filing an appeal for trademark review, which is non-extendable. The foreign applicant needs to simply provide an executed Power of Attorney to proceed with the divisional application.

How to decide?

So, in what situation should an applicant file the divisional application? We usually consider the following aspect when determining whether a divisional application is necessary.

Firstly, the chance of success of an appeal will matter whether the client should divide the application. Suppose the chance of overcoming the refusal is not high, and there is no need to appeal the refusal. In that case, the approved part of the application will be granted for initial approval after the time limit of 15 days passes. There is no need to take action but wait for the period to pass and notification of trademark publication.

Secondly, the urgency of the trademark registration will be crucial. Suppose you need the trademark registration urgently to launch products on the relevant market or with other purposes, and you also need to appeal the refusal to fight for the registration on the refused items. In that case, the registration on the approved items may suffice the intention first, and you may proceed with the appeal matter step by step.

Comments

The division is neither compulsory nor always necessary when receiving a partial refusal. It’s a regulation for an applicant to get the registration on the approved part first. The divisional application cannot be modified on the classification nor added with new goods/service items. It is also worth being noted that an international application is not applicable for a divisional application. The partial refusal on an international trademark designated China is deemed to include a declaration of a grant of protection indicating the goods and services for which protection of the mark is granted under Rule 18ter(2)(ii).