Sections 34 and 35 of the Trade Marks Act (Chapter 385) deal with two situations that would otherwise cost an applicant their priority date.
Section 34(1) and (2) — a separately registrable part
Where a part of a trade mark which is the subject of an application is separately registrable as a trade mark, the applicant may — before the application has been accepted or refused — make a further application for registration of that part, in respect of goods in relation to which the first application was made.
A further application under subsection (1) shall, if the Registrar so directs, be deemed to have been lodged on the date on which the first-mentioned application was lodged.
This solves a real problem. A composite mark — a distinctive word inside a device, with descriptive matter around it — may run into an objection as a whole. The distinctive core may be perfectly registrable on its own. Section 34 lets the applicant carve it out and, on a direction under subsection (2), keep the original date.
The further application must be made before the first application has been accepted or refused. Once acceptance or refusal has issued, section 34(1) is spent. If an examination report raises an objection to part of the mark, that is the moment to consider dividing — not after the decision.
And the retention of date is a direction of the Registrar, not an automatic entitlement. Ask for it expressly, and explain why the divided application is genuinely carved out of the first.
Section 34(3) — a narrower set of goods
Where an application has been made for a mark in respect of certain goods, and before acceptance or refusal the applicant makes a further application for the same mark in respect of goods included in the description of goods covered by the first application, the Registrar may direct that the further application be deemed lodged on the date of the first.
Note the constraint: the goods in the further application must be included in the description already applied for. Section 34 divides; it never expands. That is the same principle as in section 11(1)(d), under which an amendment of the specification must not in any way extend the rights given.
Where the Registrar cites an earlier mark under section 24 for some of the goods but not others, dividing lets the uncontested goods proceed to registration while the disputed goods are argued, opposed or abandoned. The registration issues sooner, and both applications keep the original date.
Compare the position across classes: because section 32(3) forbids one application covering more than one class, goods in a different class need a separate application with its own date — section 34 cannot rescue that.
Section 35 — registration without present use
An application may be accepted, and the mark registered, notwithstanding that the applicant does not use or propose to use it —
(a) where the Registrar is satisfied that a corporation is about to be constituted and the applicant intends to assign the mark to the corporation with a view to its use by the corporation on the goods; or
(b) where an application has been made for the registration of a person as a registered user and the Registrar is satisfied that (i) the proprietor intends the mark to be used by that person on those goods, and (ii) that person will be registered as a registered user immediately after registration of the mark.
Section 35 answers the chicken-and-egg problems of commercial life. A promoter can secure the mark before the company exists. A brand owner can register a mark that will only ever be used in the country by its local licensee.
Where a mark is registered on the strength of an intention to assign to a corporation, then unless within the prescribed period, or such further period not exceeding six months as the Registrar allows, the corporation has been registered as the proprietor, the registration ceases to have effect at the end of that period, and the Registrar shall amend the Register accordingly.
There is no discretion to save it. The steps are: incorporate under the Companies Act 1997, assign the mark under section 73, and register the assignment under section 74 — all inside the period.
How section 35 fits with the rest of the Act
| Provision | Connection |
|---|---|
| s 14(1)(a) | The non-use ground expressly accommodates a mark registered under section 35(1), asking whether the corporation or registered user has used it |
| s 17(3) | Use by a person under the applicant’s control, consent and authority, who will be a registered user, may be treated as the applicant’s own use for distinctiveness |
| s 69(1) | Permitted use by a registered user is deemed to be use by the registered proprietor for section 14 and every other purpose where the proprietor’s use is material |
| s 73(3)(a), (b) | An assignment without goodwill escapes the “never used” invalidity where the mark was registered with the intention of assigning it to a corporation to be formed, or where a registered user was registered within six months and used the mark within that period |
Read together, these provisions make an unused registration workable — but only if the intended structure is actually put in place, and promptly.
Practical checklist
- Watch the acceptance date. Division under section 34 is available only before acceptance or refusal.
- Ask expressly for the date direction under section 34(2) or (3), and say why the further application is carved out of the first.
- Divide to unblock. Where only some goods are cited against you, split them out rather than holding the whole application hostage.
- If relying on section 35(1)(a), diary the deadline for registering the corporation as proprietor, and remember the extension is capped at six months.
- If relying on section 35(1)(b), lodge the registered user application with the trade mark application, so it can be registered immediately after the mark.
- Keep evidence of the licensee’s use from the start — it is what answers a section 14 attack, and what proves distinctiveness under section 17(3).
Sources
- Trade Marks Act (Chapter 385) — ss 11, 14, 17, 24, 32–35, 45, 69, 73, 74
- Companies Act 1997
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.