The trademark registration process in Canada can be a lengthy process, beginning with a 15 to 18-month examination period before a trademark examiner informs you whether your trademark is registrable. Historically, if the examiner raised an issue with your trademark or a third-party raised an objection to registration, the entire trademark application process would be halted while the applicant attempts to overcome the issues to registration. This could extend the application process to several years before your trademark was ultimately registered or deemed to be unregistrable.
With the introduction of the new Trademarks Act (Canada) on June 17, 2019, an applicant may now divide out the goods and service claims that are contentious from any goods and service claims that pose no issue into separate applications. From there, the non-contentious application can proceed through the application process to registration, while the applicant deals with the issues in the other application.
Reasons for Divisional Applications
While this list is non-exhaustive, an applicant may wish to divide its trademark application into one or more applications, for the following reasons:
- a confusion objection is raised regarding some but not all goods and services;
- a clearly descriptive objection is raised regarding some but not all goods and services; or
- an opposition to trademark registration is filed by a third-party.
If an applicant has divided its trademark into one or more applications during the application and examination process, once the separate applications proceed to registration each application may be merged into one trademark registration.