Draft – Divisional applications in opposition

This notice is intended to clarify the practice of the Registrar of Trademarks with respect to divisional applications in opposition. It also includes information on the treatment of divisional applications filed for goods or services deleted from the original application during the advertisement period. For further information on the requirements for filing a divisional application or merging registrations, please consult the Practice Notice on Divisional Applications and the Merger of Registrations. For further information on the treatment of applications in opposition, including divisional applications, please consult Practice in Trademark Opposition Proceedings. For further information on the treatment of Protocol applications in opposition consult Opposition to Protocol Applications and Section 45 Cancellation Proceedings against Protocol Registrations.

Publication Date: 201X-XX-XX

Relevant legislation and practice notices

This Practice Notice makes reference to the following legislation and practice notices:

• Trademarks Act (the Act)
• Trademarks Regulations (the Regulations)
• Practice in Trademark Opposition Proceedings
• Practice Notice on Divisional Applications and Merger of Registrations
• Opposition to Protocol Applications and Section 45 Cancellation Proceedings Against Protocol Registrations

On this page

• I Introduction
• II Use of divisional applications in opposition
• III Correspondence
• IV Any action taken
• V Procedure followed for divisional applications filed during or after opposition proceedings
  • V.a Divisional application is filed during an opposition proceeding
    • Scenario 1
    • Scenario 2
  • V.b Divisional application is filed after the withdrawal or rejection of an opposition proceeding
    • Scenario 3
    • Scenario 4
• VI Divisional application is filed for goods or services removed during the two-month period following advertisement
  • Scenario 5
  • Scenario 6
• VII Divisional application is filed after the opposition period is extended but before a statement of opposition is filed
  • Scenario 7
• Schedule A

Important note:

In the event that Bill C- 86 receives royal assent, resulting in subsequent changes to the provisions in the Act and Regulations relating to divisionals, this practice notice will be simplified accordingly to reflect those changes.

I Introduction

An application may be divided any time after advertisement but before registration, including during the two month period following advertisement, any extended opposition period and after the filing of a statement of opposition, so long as the goods or services divided out are within the scope of the original application as advertised [section 39(1)(b) of the Act]. A divisional application may also be divided in which case section 39 of the Act applies as if that divisional application were an original application [section 39(5) of the Act].

II Use of divisional applications in opposition

The ability to divide applications during opposition allows applicants to move certain goods or services forward when, for example, (i) the opposition involves only some of the goods or services in the original application or (ii) the parties agree that the opposition against some of the goods or services could be settled allowing these goods or services to proceed to registration while the remaining goods or services are subject to opposition. Although the purpose of permitting divisional applications in opposition is, in part, to allow for settlement and subsequent withdrawal of an opposition against some goods or services, the consent of the opponent is not required for the filing of a divisional application.

III Correspondence

An applicant must copy an opponent on any correspondence relating to an opposed application after the filing of a statement of opposition, pursuant to section 44 of the Regulations. This includes the filing of a divisional of an opposed application.

The Registrar will copy an opponent or proposed opponent on correspondence concerning a divisional application. Furthermore, if an application is a divisional application or the corresponding original application to a divisional application, this will be noted on the Canadian Trademarks Database.

IV Any action taken

The general rule is that any action taken in respect of the original application, on or before the day on which the divisional application is filed, is deemed to be an action in respect of the divisional application (section 40(1) of the Regulations). This includes the submission of a statement of opposition and any steps taken in an opposition proceeding such as the submitting of evidence or attendance at a hearing. Section 40(2) of the Regulations sets out exceptions to this general rule, including:

• when a divisional application is filed after the withdrawal or rejection of an opposition; or
• when a divisional application is filed for goods or services deleted from the original application during the two-month period following advertisement.

V Procedure followed for divisional applications filed during or after opposition proceedings

Set out below are the procedures that will be followed with respect to divisional applications filed (a) during opposition proceedings and (b) following the withdrawal or rejection of an opposition proceeding. The procedure to be followed in the exceptional case where a divisional application is filed for goods or services removed during the two-month period following advertisement is set out below at VI. A chart summarizing the procedures to be followed appears as Schedule A to this practice notice.

If a divisional application is filed, the parties may wish to request leave to amend their statement of opposition or counter statement or file additional evidence with respect to the opposition proceeding against the divisional application [see Practice in Trademarks Opposition Proceedings].

V.a Divisional application is filed during an opposition proceeding

This section covers the situation where a divisional application is (i) filed during an opposition proceeding for goods or services within the scope of the corresponding original application on its advertisement date (and is therefore in compliance with section 39(1)(b) of the Act) and (ii) the goods or services in the divisional application were within the scope of the corresponding original application for the two-month opposition period following advertisement (as such the exception set out in section 40(2)(c) of the Regulations does not apply).

In these circumstances pursuant to section 40(1) of the Regulations, all actions taken by the Registrar, an applicant, or an opponent pertaining to the original application are deemed to be taken with respect to the divisional application. For example, the original application and divisional application have the same advertisement date and any statements of opposition filed with respect to the original application apply to the divisional application.

Because all actions pertaining to the original application are deemed to be taken on the divisional application, any deadline outstanding on the original application as a result of actions taken before the filing of the divisional application will also be outstanding on the divisional application. The parties should take care to monitor any outstanding deadlines on the original application and ensure that they also meet them with respect to the divisional application. In situations where a deadline expires between the time the divisional application is filed and it is accepted or where a deadline will expire within three weeks of acceptance of the divisional application, the Registrar will generally use the Registrar’s discretion to extend this deadline for a brief period of time and this will be confirmed in writing to the parties once the Registrar has confirmed the acceptance of the divisional and its application number. Finally, the Registrar may also use the Registrar’s discretion to align the deadlines for the opposition proceedings against the original application and the divisional application(s) to increase efficiencies for both the parties and the Trademarks Opposition Board.

Two example scenarios (Scenarios 1 and 2) are set out below:

Scenario 1

• Application for apples, bananas, grapes, oranges, nectarines is advertised on February 1
• Opponent files a statement of opposition forwarded to the applicant on April 1
• Applicant files and serves its counter statement on June 1
• Opponent files and serves its evidence on September 1
• Applicant deletes apples and bananas from the original application and files a divisional application for these goods on September 30
• Registrar accepts the divisional application and confirms its application number; the applicant’s deadline to file evidence on the divisional application is the same as its deadline to file evidence on the original application
  • Original application: for grapes, oranges, nectarines and the applicant has a deadline of January 1 to submit and serve its evidence or a statement that no evidence will be filed
  • Divisional application: for apples, bananas, and the applicant has a deadline of January 1 to submit and serve its evidence or a statement that no evidence will be filed

Scenario 2

• Application for apples, bananas, grapes, oranges, nectarines is advertised on February 1
• Opponent requests a three month extension of time to oppose the application on April 1, the extension is granted on April 3
• Applicant deletes apples and bananas from the original application and files a divisional application for these goods on April 10
• Registrar accepts the divisional application and confirms its application number; the statement of opposition deadline on the divisional application is the same as the original application
  • Original application: for grapes, oranges, nectarines and the opponent has a deadline of July 1 to oppose
  • Divisional application: for apples, bananas and the opponent has a deadline of July 1 to oppose

V.b Divisional application is filed after the withdrawal or rejection of an opposition proceeding

For divisional applications filed after the withdrawal or rejection of an opposition, actions taken with respect to the original application apply to the divisional application with the exception of the withdrawal or rejection of the opposition. This is because the Registrar needs to confirm that the withdrawal or rejection of the opposition applies to the goods or services in the divisional application.

For a divisional application filed after the withdrawal or rejection of an opposition, the Registrar will review the divisional application and confirm whether the goods or services in the divisional application were within the scope of the application at the time of the withdrawal or rejection of the opposition. If so, the Registrar will generally reject or consider withdrawn the opposition against the divisional application.

If the Registrar is not satisfied that the goods or services in the divisional application were within the scope of the application at the time of the withdrawal or rejection of the opposition, the Registrar will write the opponent to advise that a divisional application has been filed and request that it confirm whether it would like its opposition to continue against the divisional application. If the opponent advises the Registrar that it wishes its opposition to continue against the divisional application, the Registrar will generally set a deadline for the next step in the opposition proceeding.

Two example scenarios (Scenarios 3 and 4) are set out below:

Scenario 3

• Application as advertised: apples, bananas, grapes, oranges, nectarines
• Statement of Opposition and counter statement filed
• Opponent submits its evidence
• Opposition is withdrawn
• Applicant deletes apples and files a divisional application for apples
• Registrar confirms that apples was within the scope of the application on the date the opposition was withdrawn
• Registrar withdraws opposition against apples
  • Original application: for bananas, grapes, oranges, nectarines and proceeds to registration
  • Divisional application: for apples and proceeds to registration

Scenario 4

• Application as advertised: apples, bananas, grapes, oranges, nectarines
• Statement of Opposition and counter statement filed
• Opponent files its evidence
• Applicant deletes apples
• Opposition is withdrawn
• Prior to registration of the trademark for bananas, grapes, oranges, nectarines, a divisional application is filed for apples
• Registrar confirms that apples was not within the scope of the application on the date the opposition was withdrawn
• Registrar writes opponent to confirm whether it wishes to continue its opposition against the divisional application for apples
• Opponent confirms that it does
• Registrar sets the deadline for the applicant to submit and serve its evidence and the opposition proceeds against the divisional application
  • Original application: the original application for bananas, grapes, oranges, nectarines proceeds to registration
  • Divisional application: the divisional application for apples remains in opposition and the applicant has a forthcoming deadline to submit and serve its evidence or statement that no evidence will be submitted

VI Divisional application is filed for goods or services removed during the two month period following advertisement

In this exceptional situation, an applicant (i) removes goods or services from its application during the two month period following advertisement and (ii) after this two month period, files a divisional application including goods or services which were outside the scope of the application at the end of the advertisement period. Section 40(2)(c) of the Regulations requires the advertisement of the divisional application since potential opponents have not had two months in which to oppose the goods or services in the divisional application.

Two example scenarios where goods or services are removed during the two-month period following advertisement (Scenarios 5 and 6) are set out below. In each of these cases, the divisional application is advertised since the goods or services did not remain in the original application for the entire two-month period following advertisement.

Scenario 5

• Application for apples, bananas, grapes, oranges, nectarines is advertised on February 1
• Applicant deletes apples on March 1
• Opponent opposes application for bananas, grapes, oranges, nectarines on April 1
• Registrar forwards the statement of opposition on May 1
• Applicant files and serves a counter statement on June 1
• Applicant files a divisional application for apples on August 1
  • Original application: the opposition against the original application for bananas, grapes, oranges, nectarines continues and the opponent has a deadline of October 1 to submit and serve its evidence or a statement that no evidence will be submitted
  • Divisional application: the divisional application for apples will be advertised for a two-month period for opposition purposes

Scenario 6

• Application for apples, bananas, grapes, oranges, nectarines is advertised on February 1
• Applicant deletes apples on March 1
• No oppositions or extensions of time to oppose are filed on or before April 1
• Before the original application matures to registration, applicant files a divisional application for apples on April 10
  • Original application: the original application for bananas, grapes, oranges, nectarines will proceed to registration
  • Divisional application: the divisional application for apples will be advertised for a two-month period for opposition purposes

VII Divisional application is filed after the opposition period is extended but before a statement of opposition is filed

Scenario 7 illustrates when it is necessary to request a retroactive extension of time pursuant to section 47(2) of the Act to oppose a divisional application. Specifically, if an extension of time to file a statement of opposition is obtained, goods or services are deleted after the two-month advertisement period, and a divisional application is filed after the extended deadline to oppose where the opponent has not filed a statement of opposition with respect to the original application, should the potential opponent want to oppose the divisional application, it must request a retroactive extension of time. In these circumstances, the Registrar will generally grant the retroactive extension of time request as a potential opponent cannot file a statement of opposition against a good or service which has been deleted from an application. As such, the failure to file the statement of opposition was not reasonably avoidable.

Scenario 7

• Application for apples, bananas, grapes, oranges, nectarines is advertised on February 1
• Potential opponent requests an extension of time on April 1 to extend the statement of opposition deadline until July 1
• Applicant deletes apples on May 1
• No oppositions or further extensions of time to oppose are filed before or on July 1
• Before the original application matures to registration, applicant files a divisional application for apples on July 10
  • Original application: the original application for bananas, grapes, oranges, nectarines will proceed to registration
  • Divisional application: the potential opponent will be alerted to the filing of a divisional application for apples; if it wishes to oppose this application it should request a retroactive extension of time to file a statement of opposition

Schedule A

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.