Trademarks: Division and Merging of International Registrations

On 1 February 2019, amendments to the Common Regulations under the Madrid Agreement and Protocol came into force. While it had already been possible to partially transfer an International Registration to a new owner, it is now also possible to request the division of an International Registration for only some of the goods and services in respect of a designated Contracting Party.

1. Filing and Recording

New Rule 27bis of the Common Regulations provides the holder of an International Registration with the possibility to request the division of that registration in respect of a designated Contracting Party. The request has to be filed with the Office of the designated Contracting Party in respect of which the International Registration is to be divided; it cannot be filed directly with the International Bureau. To properly file the request, form MM22 has to be used and the goods and services to be set apart need to be named and grouped in the appropriate classes of the International Classification of Goods and Services. In addition, the request is subject to the payment of a fee of 177 Swiss francs to the International Bureau (see item 7.7 of the Schedule of Fees). Additional fees might have to be paid to the Office of the designated contracting party upon filing the request.

After the national/regional Office concerned has examined the request for division to ensure that it meets the requirements in the applicable national or regional law, it will present the request to the International Bureau. If no irregularities are found and all the requirements prescribed in new Rule 27bis are met, the International Bureau will record the division of the International Registration.

If an irregularity notice is issued by the International Bureau and not remedied within three months from the date of its notification, the request for division will be considered abandoned and the International Bureau will reimburse any amount paid after deducting 50 per cent of the amount specified in new item 7.7 of the Schedule of Fees, namely, 88.5 Swiss francs.

When recording the division, the International Bureau will create a Divisional International Registration for the goods and services specified in the request and with the Contracting Party concerned as the sole designated Contracting Party. The holder as well as the Office concerned will be notified accordingly and the division will be published in the WIPO Gazette of International Marks.

2. Dependency

Just like the original International Registration, an International Registration resulting from the recording of a division will depend on the basic mark from which the original International Registration was derived. When the original International Registration is either totally or partially cancelled at the request of the Office of Origin due to the ceasing of effect of the basic mark, the Divisional International Registration will share its fate and also be cancelled accordingly.

3. Merger of a divided International Registration

A Divisional International Registration may be merged back together (only) with the International Registration from which it was divided, Paragraph (2) of new Rule 27ter.

A request of merger must be presented by the holder through the Office that presented the request for division using official form MM 24. No fee is required by the International Bureau.

When a request for merger meets the requirements prescribed in Paragraph (2) of new Rule 27ter, the International Bureau will record the merger of the International Registrations concerned, inform the holder and notify the Offices of the Contracting Parties affected by the recording.

4. Exceptions

As the national laws of some countries do not provide for divisional applications/registrations, a Contracting Party may inform the International Bureau that it will not present to the latter requests for division and/or merger of international registrations. At least Turkey, Australia, Madagascar, Colombia, Japan and Slovakia notified the International Bureau accordingly.

5. Summary

The new possibility to divide an International Registration not just by country, but also by setting apart individual goods and services only, is a welcome tool that will make it easier to settle trademark conflicts arising from the specification of goods and services of an application where no actual confusion in the market is given. How frequently it will be used will, however, also depend on the time frame needed to register such division and it can only be hoped for that the concerned Offices will act rather quickly.