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Last June saw some significant changes to the Trade-marks Act with the passing of Bill C-31, the Budget Implementation Act. These are the first major updates to the Trade-marks Act in over sixty years. This post looks at divided applications.

The Bill introduces a new scheme that allows an applicant to divide an application into two or more applications. Divided applications will have the same filing date and priority date, if applicable.

This would be particularly effective, for example, if the application recites multiple classes of goods and services, and may be allowable for some of those classes, but not all (typically due to confusion with other registered trademarks). To speed up the process of obtaining registration, the applicant may divide the application into at least two: one application with all the allowable goods/services, and the other with objected goods and services. This will allow the applicant to obtain, at least, registration for the goods and services that would not cause any confusion to the public, and take time to obtain registrations for those that may be confusing with other registered marks. Since the divided applications are owned by the same owner, such divisional applications will not be cited against each other for confusion by the Examiner.

Under the current Act, there is a concept of “associated trademarks”, which states that all confusingly similar trademarks must be owned by the same owner. The new Act repeals the concept of “associated trademarks”, but retains the criteria for treating confusing marks. For example, confusing trademarks can only be registered if the applicants/owners of all such confusing trademarks are the same. However, the new Act will no longer restrict amendments to the register (such as for transferring part of confusing marks to others). Therefore, the new Act allows some confusing marks to be assigned to and owned by a third party.

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This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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