Countdown to Canada's new Trademarks Act: Taking advantage of divisional applications, and a caution about the Trademarks Database

13 June 2019

Divisional applications

After the changes to the Trademarks Act take effect on June 17, applicants will have a new tool for reaching registration efficiently - divisional applications.

What are divisional applications?

Under the new Act, it will be possible to divide a trademark application, with some goods/services staying in the original application, and some goods/services being removed to form a second, "divisional" application. The divisional application will have the same filing date as the original application, meaning that applicants will keep their "place in line" for the items that were divided out. Once the divisional application is created, it will progress through the registration process independently from the original.

Why divide? One reason for dividing an application would be to navigate around issues that the Trademarks Office raised during examination; if a difficult objection were received that only applied to some goods/services, the problematic items could be divided out. The original application containing the issue-free goods/services would then be free to proceed to the next steps, while the applicant tries to overcome the Office's objection for the divided out goods/services. It will also be possible to divide applications after they are advertised for opposition. Therefore, if an opponent objected to registration of the mark for some goods/services but not others, divisional applications would offer a way for the uncontested items to move on to registration while the opposition unfolds for the contested goods/services.

It will even be possible to sub-divide divisional applications, and to merge the divided applications back together after they have registered, giving applicants considerable flexibility to slice and dice.

Trademarks Database updates to be suspended

In another development, the Trademarks Office has advised that Canada's Trademarks Database will not be updated from June 12 to June 26, inclusively. During this time, extra care should be taken when reviewing trademark search results, as the Database will be less current than usual. The last update of the Database occurred on June 11.

For more information about these or any other developments, please contact your Gowling WLG professional.

NOT LEGAL ADVICE. Information made available on this website in any form is for information purposes only. It is not, and should not be taken as, legal advice. You should not rely on, or take or fail to take any action based upon this information. Never disregard professional legal advice or delay in seeking legal advice because of something you have read on this website. Gowling WLG professionals will be pleased to discuss resolutions to specific legal concerns you may have.