From 1st February 2019, the World Intellectual Property Organisation (WIPO) is now allowing international trade mark registrations, made under the Madrid Agreement and Protocol, to be divided and merged.
As a consequence of this, effective 21st March 2019, the Intellectual Property Office of New Zealand (IPONZ) has updated its trade mark regulations for international trade mark applications to accommodate these changes.
Division in Trade Mark Applications
In some jurisdictions, there is provision to file a new divisional (child) trade mark application based upon an original parent application.
Such divisionals may comprise part of a series of marks, or some of the classes, and / or some of goods and services from the parental application. They will retain the priority, application, registration and renewal dates of the parent (as appropriate).
The value of doing this is that it allows trade mark applications having goods and / or services that conflict with another trade mark, or that have been rejected or opposed, to have the conflicting goods and services removed, whilst retaining part of the original application.
The process may also be used strategically. For example, to progress part of an application that covers goods or services already used in commerce to registration faster and acquire the associated benefits, whilst leaving the remaining goods and services at the application stage.
The subsequent divisional application will then have a greater chance of proceeding to a successful registration.
Merger in Trade Mark Applications
Certain jurisdictions also make provision to merge two more trade mark applications or registrations into a single application or registration respectively.
Provided a set of examination requirements are met, such as the request being for the same mark or series of marks; the same filing and priority dates, status, and owner; .and that the marks were classified under the same edition of the Nice Classification, then such an action may be allowed.
Often this is used to bring together applications that had a previously been divided.
The Impact of These Changes
The changes recently announced by WIPO now enable trade mark owners to apply the same strategic approaches to those parts of their IP portfolio filed via international mechanisms as was previously possible with certain national filings.
It is important to note that contracting parties may opt out of accepting requests for division and / or merger if their domestic legislation does not provide for these practises.
For New Zealand readers, attention is drawn to notices submitted to WIPO from two of our top trading partners, China and the European Union. China has notified WIPO that it will not be accepting requests for division or merger of international marks, and the EU that it won’t be accepting requests for mergers.
When formulating your IP and business strategy in these jurisdictions, further clarification of the current position of local law and regulations should be sought in order to make appropriate decisions.
Intellectual Property Office of New Zealand. (2019, March 27). “New division and merger process for International Trade Mark Registrations”. Retrieved April 05, 2019, from: https://www.iponz.govt.nz/news/new-division-and-merger-process-for-international-trade-mark-registrations/
Intellectual Property Office of New Zealand. “Maintain an international trade mark”. Retrieved April 08, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/international/maintain-an-international-trade-mark/
Intellectual Property Office of New Zealand. “Trade Marks: Practice Guidelines: Division”. Retrieved April 05, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/current/division/
Intellectual Property Office of New Zealand. “Trade Marks: Practice Guidelines: Merger”. Retrieved April 08, 2019, from: https://www.iponz.govt.nz/about-ip/trade-marks/practice-guidelines/current/merger/
Law Offices of Nikki Siesel Pllc. “Why An Applicant Would Divide A Trademark Application”. Retrieved April 08, 2019, from: https://www.ny-trademark-lawyer.com/why-an-applicant-would-divide-a-trademark-application.html
Stats NZ Tatauranga Aotearoa. (2018, June 05). “Goods and services trade by country: Year ended March 2018”. Retrieved April 08, 2019, from: https://www.stats.govt.nz/information-releases/goods-and-services-trade-by-country-year-ended-march-2018
World Intellectual Property Organisation. (2018, November 07). “Madrid Agreement and Protocol Concerning the International Registration of Marks”. Retrieved April 08, 2019, from: https://www.wipo.int/edocs/madrdocs/en/2018/madrid_2018_21.pdf
World Intellectual Property Organisation. (2019, February 01). “The Division and Merger of International Registrations”. Retrieved April 05, 2019, from: https://www.wipo.int/madrid/en/news/2019/news_0002.html
World Intellectual Property Organisation. (2019, March 22). “Madrid Protocol Concerning the International Registration of Marks: Notification under new Rule 27ter(2)(b) of the Common Regulations: European Union”. Retrieved April 08, 2019, from: https://www.wipo.int/edocs/madrdocs/en/2019/madrid_2019_16.pdf
World Intellectual Property Organisation. (2019, March 27). “Madrid Protocol Concerning the International Registration of Marks: Notification under new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations: China”. Retrieved April 08, 2019, from: https://www.wipo.int/edocs/madrdocs/en/2019/madrid_2019_32.pdf
World Intellectual Property Organisation. “Nice Classification”. Retrieved April 08, 2019, from: https://www.wipo.int/classifications/nice/en/