New provisions for the merger and division of international TMs

5th Mar 2019

The World Intellectual Property Organisation (WIPO) introduced new provisions for the division and merger of international trade mark registrations.

The changes came into effect on 1st February 2019.

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.

There will be a specific form for requesting division - 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. The UK Intellectual Property Office (UK IPO) will not charge a fee from their side for MM22 forms filed through them. 

MM22 forms filed at other intellectual property offices may attract local official fees (and local agent fees).

A 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.

Once division has taken place, WIPO will create a new international registration (covering just the one designated country). We believe this will take 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 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

There will be new WIPO form for mergers - MM24. It will be possible to file them directly with WIPO. No fee will be payable.

Opting out

A number of countries have already indicated to WIPO that division is not provided for in their domestic law and, therefore, their intellectual property office will not present requests for division of an international registration: Antigua and Barbuda, Bahrain, Bulgaria, China, Curaçao, France, Georgia, Indonesia, Liberia, Madagascar, Mexico, San Marino, Thailand, Turkey and Ukraine.

The list of countries that do not provide for merger in their domestic laws is longer, although we do not anticipate merger will be used a lot anyway.

When considering division or merger of an international registration, we suggest you consult with WIPO resources and/or local agents.

Nonetheless, we welcome these steps that add flexibility to the international system, in particular division.

Author

Return to listing