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.
For more information, click here.
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