What is a divisional trademark application in Japan? Explanation of cases and cautions.

I got a notice of reasons for refusal for a trademark application that I want to get registered as soon as possible.
I’ll deal with it, of course, but I don’t want to delay the registration of the right.

Is there a reason for refusal for only some of the designated goods?
If so, you may be able to file a divisional application to get the important parts of the application registered quickly.

This article explains the requirements and effects of filing a divisional application for a trademark, and what to look out for when filing a divisional application.

What is a divisional application for a trademark?

Filing a divisional application for a trademark means filing a new application by dividing a part of the designated goods or services of a trademark that has already been filed. In this case, the “already filed trademark” is called the “original application”.

It is possible to file a separate application for a part of a division or to divide an entire division.
The fee varies depending on the number of divisions, but it is the same as for a regular trademark application.

Only the designated goods or services can be divided.
For example, a trademark written in two columns cannot be divided into two separate applications.

This is a different system from that of divisional transfer after trademark registration.

Merits and demerits of divisional applications

Merits of divisional applications (cases where divisional applications are used)

The orthodox cases of using divisional applications are;

• When reasons for refusal have been notified for some of the designated goods or services, and the applicant wishes to register the unproblematic goods as soon as possible.
• When a reason for refusal is likely to be notified for a part of the designated goods/services, and the applicant wishes to register the unproblematic goods as soon as possible.

The following are the cases in which you wish to register a product or service that is not in question as soon as possible.

In particular, it may take a long time to obtain a right for the goods or services in question if a large number of pieces of evidence are submitted and negotiations with the prior applicant are conducted.
In such a case, you can partially accelerate the grant of rights by making the procedures separate from those for the goods or services that are not in question.

Disadvantages of a divisional application

The disadvantage of a divisional application is that there are two procedures, which means twice the administrative effort and twice the cost.
The cost of a divisional application is the same as for a regular trademark application.

Once both the original application and the divisional application have been successfully registered, and you intend to use those trademarks for a long time
Instead of renewing, one option is to re-file a new application that includes both designated goods and services.

Effect of filing a divisional application for a trademark

A trademark for which a divisional application has been filed is deemed to have been filed at the time of filing the original application (Article 10(2) of the Trademark Law).
This means that from the time of filing the first application, you can hold the status of “being an earlier application than the applications of other companies”.

Requirements for filing a divisional application for a trademark

Principal Requirements

An applicant for trademark registration may file a divisional application.

Temporal requirements

A divisional application for a trademark may be filed in either of the following cases

• the trademark application is pending examination, trial, or retrial; or
• a lawsuit to revoke a trial decision of refusal on the trademark application is pending before the court.

Procedural Requirements

• First, the filing fee for the original application must have been paid before divisional filing.
• Then, the divisional application procedure must be taken.

How to file a divisional application for a trademark

What is the procedure for filing a divisional application for a trademark?

Prepare a new application for trademark registration.

First, for divisional applications, prepare a new application for trademark registration in the same way as for regular applications, and then file a new application for trademark registration
In the line above [Date of filing], enter [Special remarks] Application for trademark registration under Article 10(1) of the Trademark Law.

In the [Designated goods or designated services and classifications of goods and services] field, enter the designated goods to be divided.

Deletion Amendment

At the same time as filing a divisional application, an amendment must be made to delete from the original application the goods and services for which the divisional application was filed. (Article 22(4) of the Trademark Law Enforcement Regulations)
Prepare a “written amendment” and delete the goods stated in the new application’s [designated goods or designated services and classes of goods and services] from the original application’s [designated goods or designated services and classes of goods and services].

The application for divisional application and the amendment must be filed at the same time.

Which divisional application should be filed for goods with or without a reason for refusal?

When filing a divisional application to avoid reasons for refusal, which of the goods or services should be divided, those with reasons for refusal or those without reasons for refusal?

I understand that if you have a product with a reason for rejection and one without, you can register the one without a reason for rejection faster if you split it up.
Which one should I split, the one with reasons for refusal or the one without reasons for refusal?

When “a trademark application is pending examination, trial, or retrial,” division of the designated goods or designated services with reasons for refusal will facilitate the smooth registration of rights.
For the designated goods for which there are no reasons for refusal, the trademark application will likely be registered as it is since it is already known that no reasons for refusal were found during the examination.

However, if “a lawsuit to cancel the decision of refusal on the trademark application is pending before the court and the application fee has already been paid,” it is necessary to split the without reasons for refusal one.
This is because when a lawsuit regarding a trademark application is pending before the court, it is not possible to delete the designated goods of the one with reasons for refusal from the original application. After all, it is not possible to make a deletion amendment.
(eAccess case (Supreme Court Decision No. 4 of 2004 (Gyohi), July 14, 2005))

Choose a patent attorney who is experienced in dealing with notices of reasons for refusal

Filing a divisional application for a trademark must be done at the same time as filing an amendment.
A patent firm equipped with an online filing environment will make the process smoother.

I have to prepare a written opinion in response to the notice of reasons for refusal, and I will consult with an expert, including whether or not a divisional application is necessary.

Amazing DX is operated by HARAKENZO WORLD PATENT & TRADEMARK, a leading patent firm established in 1976.
Of course, we have extensive experience in divisional applications, so please contact us if you are troubled by a notice of reasons for refusal.

Feel free to consult a patent attorney!

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