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Intellectual property is an asset that your business owns which can generate profit and bring value. Trade marks are a kind of intellectual property. They refer to signs that can represent your business, such as your business’ name or logo. When you have registered trade mark rights with the Intellectual Property Office of New Zealand (IPONZ), you gain certain powers that centre around how you can control your property. One power relates to dividing your trade mark, which involves separating an existing application or registration into separate parts. This process is complex, so you should seek out a trade mark specialist’s help if you wish to continue. For some guidance, this article will go through four questions to ask your lawyer before dividing your trade mark.

What Do I Keep If I Divide My Trade Mark?

When you apply to divide your trade mark, you ask IPONZ to create a new trade mark case by dividing differing aspects of your original mark. In this process, your original trade mark application or registration is the parent, and the secondary mark is the child. While this child trade mark’s coverage may differ from its parent, where applicable, it keeps the same important dates, such as the:

  • priority date;
  • application date;
  • registration date; and
  • renewal date.

A lawyer can help you figure out what aspects of your trade mark to keep in your parent case, and what to put in the child case. They can also help you determine ownership of both of these cases. This becomes particularly helpful if there are other parties to negotiate with.

How Can I Divide My Trade Mark?

In terms of actual effect, there are three ways you can divide a trade mark. These include dividing it from:

  • other trade marks as part of a series;
  • other classes of the parent trade mark; and
  • specific goods or services that the original trade mark applies to.

For example, say that you had a trade mark related to class 22 (ropes, nets, and bags) and class 26 (ribbons and braid). With a trade mark division, you could divide your original trade mark so that it only applied to class 22, and the child trade mark applied to class 26.

However, this process involves detailed documentation, as you have to provide specific information that includes, among other things:

  • your details as the division applicant/trade mark owner;
  • details about your original trade mark; and
  • the specifics of how you want to divide your trade mark.

If your paperwork is not in proper order, then IPONZ will reject your trade mark division application. A lawyer can help you prepare this documentation and help you make important decisions about how exactly you wish to divide your trade mark or trade mark application.

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Should I Divide My Trade Mark?

Dividing your trade mark is an official process and one that you should only undertake where it has real use to you. A lawyer can help you look at your options and decide whether trade mark division best serves your needs. Some reasons that you may wish to divide your trade mark application include:

  • dividing conflicting goods/services/classes of a trade mark application into a secondary case so that the parent case can proceed to registration;
  • responding to opposition to certain aspects of a trade mark, by dividing the relevant parts of the trade mark into a child case; or
  • moving classes/goods/services from one trade mark to a new one to better your chances of a successful application.

In some cases, a simple removal of the conflicting aspects of a trade mark may be useful. However, in others, the division may better serve your interests. Receiving advice from a lawyer on the subject will help you determine what path will best benefit your business.

When Is the Best Time to Divide My Trade Mark?

Notably, you can apply for division through the online portal on the IPONZ website. A lawyer can help you determine when is the best time to divide your trade mark, as your timing can have different effects on your registration.

For instance, while you can both divide a trade mark application and a registered trade mark, the effects of this process may be different depending on the nature and stage of the trade mark.

You can divide trade marks that are even past their expiry date if you have missed their renewal. However, if you cannot divide a trade mark if it has been:

  • withdrawn;
  • abandoned;
  • refused; or 
  • deemed no longer “active”.

Note that the processing time for an application to divide a registered trade mark can take up to 15 working days.

Key Takeaways

Dividing your trade mark is a complex process, and the success of your division application will depend on how well you prepare your documentation. Therefore, you should engage the help of a trade mark specialist to ensure you can use this process to benefit your business. If you would like more information or help with dividing your trade mark, contact LegalVision’s Trade Mark lawyers on 0800 005 570 or fill out the form on this page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign or symbol representing your business and the goods or services it provides. Examples include your business name, logo, or the names of a particular product.

What does dividing a trade mark mean?

There are different ways to divide a trade mark, but it typically means dividing your original trade mark into a parent case and a child case. One way to do so is to split the classes your original trade mark applied to into two separate marks.

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