Canadian trademark divisional applications are surprisingly rare, given their potential utility.
CIPO began accepting divisionals on 17 June 2019 upon coming into force (CIF) of extensive amendments to the Trademarks Act, RSC 1985 c. T-13 (TMA).
CIPO’s divisional practice notice explains that an application may be divided for various strategic reasons:
- if a confusion or descriptiveness objection is raised in respect of particular goods or services, they may be divided out so that the parent application can proceed to advertisement in respect of the remaining items; or
- if an application is opposed, the applicant may divide out any contentious goods or services so that the parent application can proceed to registration in respect of the remaining non-contentious items.
According to CIPO’s trademark .xml data (as of 14-Nov-2022), 225 Canadian trademark applications have been divided to create a total of 307 divisional applications. To put this in perspective, CIPO has received 252,742 applications of all types since CIF, so divisionals constitute a tiny fraction (about 0.12%) of the total.
Only one inbound Madrid application has been divided: see application no.
1983584 (corresponding to IRN 1485732) and its divisional application no.
2201036.
Applications filed pre-CIF can be divided. 293 (over 95%) of the 307 divisionals are based on pre-CIF parent applications. This is not surprising given CIPO’s backlog of unexamined applications
1, since strategic considerations respecting possible divisional filings do not typically come into play until prosecution is well under way.
A single parent application may spawn multiple divisionals. The current record holder, in terms of number of divisionals, is application no.
1864682 Wow no cow! (now TMA1133000) which has 18 divisionals.
Upon request and without payment of a fee, divisionals that mature to registration can be merged with other registrations having the same parent where the trademarks are the same and have the same registered owner
2. There appears to have been only one such merger: see application no.
1893350 (TMA1121163) and its divisional
2112333.
92 agents have filed one or more divisionals. The top 10 agents in terms of number of divisional filings are:
1 As of 14-Nov-2022 CIPO’s backlog of unexamined applications totals 189,181 cases, of which over ten thousand were filed pre-CIF.↩
2 In contrast, extension of goods / services applications which mature to registration are automatically merged into the original registration, whereupon CIPO deletes the extension application from the online database. But see extension application no. 684956-01 which remains accessible via the online database despite its “Merged” status. .↩
