WIPO to introduce Division and Merger for International Registrations

Those managing International trade mark registrations may be pleased to note of new provisions for Division and Merger that are being introduced by WIPO from February 2019.

This will give greater flexibility to International Registrations. Division, in particular, has been a disadvantage of International Registrations over (some) National registrations.

Division

As a recap, division can occur where there are objections to some of the classes in a multi-class application, the classes with objections can be transferred to a divisional application and be dealt with later. This allows the acceptable classes to move forward without delay. It can also be used to divide goods/services within a single class, although this is less common.

Division will now be possible for individual countries designated in an International Registration, provided division exists within the national law. Countries can opt out of accepting requests for division and/or can also notify WIPO of their incompatibility with the national law.

There will be a specific form for requesting division, a Form MM22. Unusually, this form is not to be filed with WIPO but with the National Office of the designated country in which you wish to request division. Currently, all WIPO forms are filed either directly with WIPO and/or through the Office of origin.

There will also be a fee due to WIPO of 177 Swiss francs. This can be paid through a current account held with WIPO or by bank transfer. Presumably, it would also be possible to not pay the fee and wait for an Irregularity Notice and then pay the fee by credit card through the E-Payment Service, although this would add delay.

As WIPO mention, the National Office may examine the request for division of an International Registration to ensure that it meets the requirements in their law before presenting it to WIPO. The Office may also require the payment of a fee, directly to them, different from the fee due to WIPO. It should also be mentioned that division is likely to be happening in foreign countries and therefore you are also likely to incur professional fees of a local agent.

Alternatively, you may be handling a specific designation of an International Registration on behalf of a client. For example, if you are a UK practitioner and have been entrusted with only the UK designation, then you would be making the request for division of an International Registration to the UK Intellectual Property Office ("UKIPO"). The UKIPO currently has a form for requesting division of a national application - a Form TM12 - which carries a fee of £100. I anticipate this fee will also apply to requests for division of an International Registration and perhaps the UKIPO may produce their own Form MM22 with a more similar look and feel to their Form TM12.

It is not clear if, for example, the UKIPO would also, on request, take the WIPO fee from a UKIPO deposit account and pass to WIPO, like they can do with new International applications filed through them as Office of origin.

Once division has taken place, WIPO will create a new International Registration (covering just the one designated country) - I would guess with the same number and a letter suffix.

Central Attack

The divided part of an International Registration will retain the same base mark. If this is lost (e.g. through Central Attack) within the first five years of registration then both the original International Registration and the divided International Registration will be cancelled.

Merger

The new regulations will allow for the merger of International Registrations under two circumstances:

1. Merger of international registrations resulting from the recording of a partial change in ownership; and
2. Merger of international registrations resulting from the recording of division

The second is clear. Presuming you overcome the issues with the divided part then you can merge it back into the main International Registration it was divided from. You'll then have just one registration to manage, renew and maintain.

The first is not entirely clear to me. If you record a partial change in ownership of an International Registration, this will create a new International Registration for the part where ownership has been partially changed. It seems therefore that if the two (or more) International Registrations subject to a partial change in ownership then come to all be back in the same ownership at a later date that they can then be merged together. If so, I do not see if this would be used much in practice.

There will be new WIPO form for mergers, a Form MM24, and it will be possible to file them direct with WIPO. No fee will be payable.

Countries can opt out of accepting requests for merger and/or can also notify WIPO of their incompatibility with the national law.

These steps will add flexibility to the International system, in particular division. Nonetheless, the relationship between WIPO, the Office of origin and the National Offices of designated countries is not always well understood and the addition of extra forms may prove to be more beneficial to more experienced users of the International system.