The Division and Merger of International Registrations
February 1, 2019
As of February 1, 2019, international registrations may be divided and, where certain conditions are met, international registrations may also be merged.
Full details of the amendments to the Common Regulations under the Madrid Agreement and Protocol concerning the division and merger of international registrations are available .
Division may be useful where, for example, the Office of a designated Contracting Party refuses an international registration for only some of the classes of goods or services (or refuses only some of the goods or services within one class) covered by the international registration. The new rule enables the holder to take advantage of division by opting to turn the accepted or refused classes (or goods or services) into a new international registration (the divisional registration) that will be given the same number as the original registration, together with a capital letter. As a result, the acceptable classes (or goods or services) may proceed to protection without further delay, enabling the holder to deal with the objectionable classes (or goods or services) at a later stage.
It is possible to request the merger of international registrations resulting from:
1) the recording of a partial change in ownership; and
2) the recording of division.
It is only possible to merge two or more international registrations that were separated from the same international registration due to a partial change in ownership or a division. It is not possible to merge international registrations that originated as separate international applications.
Merger resulting from the recording of division
It is possible to request the merger of a divisional international registration. A divisional international registration may only be merged with the international registration from which it was divided.
Merger resulting from the recording of a partial change in ownership
A partial change in ownership will occur where a holder makes a request to record such change in respect of only some of the designated Contracting Parties or some of the goods and or services.
A partial transfer may also occur where the holder has requested a change in ownership but one or more of the Contracting Parties has issued a declaration stating that such change has no effect in their territory. That declaration may be issued by a Contracting Party that has objected to the transfer on the basis of its domestic legislation, such as, for example, because the transfer would mislead the public.
The part which has been transferred (as a result of the recording of a change or of a declaration of no effect) will be recorded as a separate international registration that will be given the same number as the original registration, together with a capital letter.
If the same person subsequently becomes the recorded holder of two or more of the separate international registrations that resulted from a transfer (for example, a declaration that a change in ownership had no effect is later withdrawn), that person may request that those international registrations be merged.
Will division or merger of an International Registration be an option?
In principle, yes; however, not all Contracting Parties accept requests for division or requests to merge a divisional registration. Contracting Parties can opt-out of accepting such requests if their domestic legislation does not provide for division or merger, or Contracting Parties may notify WIPO that the new rules are not compatible with their applicable domestic laws.
Please refer to the Madrid Information Notices for details of the Contracting Parties that have notified WIPO that they are not accepting requests for division or requests to merge a divisional registration. Please note that it is possible that a Contracting Party’s status to accept those requests may change in the future.
On the other hand, merger of international registrations resulting from the recording of a partial change in ownership or of a declaration that such change has no effect is always possible, provided the same person has been recorded as the holder of the registrations to be merged.
How to request division or merger
A request for division must be filed using Form MM22. The request cannot be filed directly with WIPO and must be filed with the Office of the designated Contracting Party in which the holder wishes to request division. The fee for recording the division in the International Register is 177 Swiss francs. The Office concerned may also request a fee for processing the divisional request. This fee is separate to the fee to be paid to WIPO.
Merger resulting from the recording of division
A request for merger of a divisional registration must be presented by the holder through the Office that presented the request for division, using official form (MM 24). The request cannot be presented directly to WIPO. There is no fee to be paid to WIPO for this request.
Merger resulting from the recording of a partial change of ownership
A request for merger of international registrations resulting from the recording of a partial change in ownership or of a declaration that such change has no effect may be presented directly to WIPO or through the Office of the Contracting Party of the holder using form MM23. There is no fee to be paid to WIPO for this request.
Examination of the request for division or merger
The Office concerned will examine the request for division to ensure that it meets the requirements of its applicable law, including any requirements concerning fees.
If the Office accepts the request for division it will present the request to WIPO. It may also inform WIPO of the interim status of the protection or provide a statement of grant of protection in respect of the goods or services listed in the request.
WIPO will examine the request for division to ensure it meets the formality requirements set out in the relevant rules. If the request is irregular, WIPO will notify the Office that presented the request, as well as the holder. If the irregularity concerns insufficient payment of the fee due to WIPO, the holder would have three months to pay the outstanding balance directly to WIPO.
Regarding any other irregularity, the Office will need to remedy the request within three months. Although the holder will be aware of the irregularity and may liaise with the Office concerned, the irregularity must be remedied by the Office. WIPO will not accept communications from the holder in this regard. If the Office does not remedy the irregularity the request will be considered abandoned and the holder will be reimbursed 50 percent of WIPO’s fees.
Once the division has been recorded, WIPO will create a divisional international registration. (just for the one Contracting Party concerned) in respect of the goods or services specified in the request (the divided goods or services), notify the Office that presented the request and inform the holder. WIPO will also record any interim status of the protection, or statement of grant of protection, included with the request for the recording of division.
Merger resulting from a division
A request for merger of a divisional registration must be examined by the Office receiving the request to ensure it meets the requirements of its applicable law before presenting it to WIPO. WIPO will record the merger, notify the Office that presented the request and inform the holder.
Merger resulting from a partial change in ownership
WIPO will examine requests for merger of international registrations resulting from a recording of a partial change in ownership or of a statement that such change has no effect received from the Office of the Contracting Party of the holder or directly from the holder to ensure it complies with the formality requirements set out in the relevant rules.
If the request meets the formality requirements set out in the relevant rules, WIPO will record the merger and notify the Offices of the designated Contracting Party or Parties affected by the recording, inform the holder and, if the request was presented by an Office, that Office.
The effective date, renewal of the divisional registration and ceasing of effect
Effective date and renewal
The division of the international registration will be recorded with the date on which WIPO received the request or, where the request was irregular, the date on which the irregularity was remedied. However, the effective date of the divisional registration will be the same as the original international registration. Therefore, it follows that the renewal date of the divisional international registration will also be the same as the original international registration (not the recorded date of the request for division).
Ceasing of Effect
Any divided part of an international registration is based on the same basic mark as the original international registration. Accordingly, if the basic mark ceases to have effect for any reason either within, or resulting from actions that begun within, the first five years of registration (i.e. during the dependency period) both, the original international registration and the divided part of the international registration, will be cancelled.
International Registrations dated before February 1, 2019
WIPO will accept all requests for division or for the merger of divisional registrations that are received from February 1, 2019, regardless of the date of the international registration.
However, the requests must be filed through the Office of the Contracting Party where division or merger will have effect, and this Office may or may not accept requests for registrations dated before the new rules entered into force.