Application for the Division of an International Registration (IR) Designating the EU

Simona Carelli

Counsel of Modiano & Partners

The EU trademark regulation (EUTMR) allows for the division of EU trademarks (EUTMs) into different parts not only as a result of a partial transfer, but also on the EUTM applicant’s own initiative. Division may be useful for example if an EU trademark could be accepted for a part of the goods or services covered by the application, but there are registration obstacles for the rest of the goods and services, which might cause a longer processing time. 

Before February 1, 2019, division was available only for EUTMs filed directly with the European Union Intellectual Property Office (EUIPO) but not for international registrations (IRs) designating EUTMs, as the international register is kept at the World Intellectual Property Organization (WIPO), and the EUIPO did not have the authority to divide an IR designating an EUTM. 

On February 1 , 2019, amendments t o the Common Regulations under the Madrid Agreement and Protocol entered into force, and the new Rule 27 bis of the Common Regulations allows holders of IRs to request the division of an IR in respect of a designated Contracting Party, including an EUTM.

Thanks to the new Rule 27 bis, it is now also possible to file applications for the division of an EUTM designation in an IR. The request must be submitted via the EUIPO using WIPO application form MM22. Since this form does not include the indication of the goods/services which are to remain in the original registration, an additional page containing the list of goods/services that are to remain in the initial registration must be submitted together with the application form MM22.

The division application process entails the following steps:

● The applicant presents the request to the EUIPO by submit t ing application form MM22 in the language of the IR;

● The EUIPO examines the request and transmits i t to the WIPO ( i f i t i s admissible under the EUTMR);

● If the request complies with the requirements of Rule 27 bis of the Common Regulations under the Madrid Agreement and Protocol, including the payment of the international fee (CHF 177; the EUIPO does not charge for its service), the WIPO records the division and creates the divisional IR in the international register;

● The WIPO then notifies the EUIPO which creates the divisional application in its database;

● The division will be effective from the date of receipt by the WIPO of the request or, if there is an irregularity in the request, the date the irregularity is remedied.

While division is now available for an EUTM designation in an IR, the EUTMR does not yet contemplate mergers for registrations, so the EUIPO is not bound by the new provision of the Madrid Agreement and Protocol (Rule 27ter).