Divisional applications in opposition

Publication Date: 2019-06-17

This practice notice is intended to clarify the practice of the Canadian Intellectual Property Office (CIPO) 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.

Relevant Legislation and Practice Notices

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

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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 on the day the divisional application is filed [section 39(1)(b) of the Act].  See Schedule A for a summary of procedures to be followed for divisional applications filed during opposition.

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].

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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.

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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 application derived from 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.

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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.

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V Procedure Followed for Divisional Applications filed during Opposition Proceedings

If a divisional application is filed during opposition proceedings, all actions taken by the Registrar, an applicant, or an opponent pertaining to the original application, prior to filing the divisional 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 prior to the filing of divisional application with respect 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. 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.

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].

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

V.1 Scenario 1

V.2 Scenario 2

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VI Divisional Applications Filed during the Two-Month Period Following Advertisement

If a divisional application is filed during the two-month period after advertisement and the Registrar confirms the divisional application prior to the filing of a statement of opposition or extension of time to oppose being filed, a potential opponent may not receive notice of the divisional application by way of letter from the Registrar (as there would be no interested party on the file).  In this case, a potential opponent may request a retroactive extension of time under section 47(2) of the Act to file a statement of opposition. This will likely be granted.

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VII. Divisional Applications under the Madrid Protocol

This practice notice also applies to divisional applications filed for Protocol applications, to the extent possible.

Division of a Protocol application may be used, for example, where an opponent or potential opponent has indicated that it has an issue with respect to only some goods or services.  When this occurs, an applicant may wish to divide out some of the goods or services to allow the original Protocol application to move forward to registration.  Note that it may be beneficial to divide out the impugned goods or services from the original International Registration, so that the goods or services for which protection is granted remain part of the original International Registration and are, for example, included in its renewal.

Once the Registrar receives a request to divide a Protocol application, and all the requirements are met, the Registrar must send it to the International Bureau (IB). However, the application is not deemed to be divided until the IB notifies the Registrar of the creation of a divisional international registration in respect of Canada, and provides the new registration number to CIPO. The date of division for Protocol applications is deemed to be the date CIPO receives this information from the IB.

If an application is deemed divided before a statement of opposition is filed, an opponent wishing to file a statement of opposition against both the original and divisional Protocol applications must ensure a statement of opposition (and the accompanying fees) is filed in respect of both applications.  The Registrar will then send the provisional refusal against both applications.

As the 18-month deadline for the Registrar to send a provisional refusal based on opposition cannot be extended, if a statement of opposition is filed prior to the deemed date of division, the Registrar will send a provisional refusal against both the original and divided application unless the opponent advises the Registrar that the opposition against one or both applications is withdrawn.

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Schedule A

Summary of procedures followed for divisional applications filed during opposition
When divisional application is filed Procedure after the filing of the divisional application
After Advertisement, but before a Statement of Opposition is Filed

A party wishing to oppose both the original application and divisional application must file a statement of opposition (and the accompanying fees) against each. 

If a potential opponent does not have notice of the filing of a divisional application, if a retroactive extension of time oppose is requested, this will likely be granted.

During the Opposition

All actions taken by the Registrar, an applicant, or an opponent pertaining to the original application on or before the day the divisional application was filed are deemed to be taken with respect to the divisional application.

After Withdrawal or Rejection of an Opposition

The opposition will be deemed withdrawn for the divisional application or rejected with respect to the divisional application.

After Registration Certificate has Issued

The request to file a divisional application will not be processed. A divisional application can only be filed prior to registration.

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.

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