Document Actions

3. Voluntary disclaimer of trade mark by owner

Section 69 of the Act states that:

The owner of a trade mark may disclaim any right to the exclusive use of any part of the trade mark.

Therefore, the Commissioner will enter any disclaimer to exclusive rights to use any part of a trade mark requested by the owner of an application or registration for a trade mark. The standard formats for such disclaimer are as follows:

Pursuant to section 69 of the Trade Marks Act 2002, the owner voluntarily disclaims any right to the exclusive use of the word [] in the mark.

Pursuant to section 69 of the Trade Marks Act 2002, as a result of an agreement with a third party, the owner has voluntarily disclaimed any right to the exclusive use of the word [] in the mark.

Regulation 138 of the Regulations sets out the necessary formalities when an owner requests the entry of a disclaimer in the register pursuant to section 69 of the Act. A request to enter a disclaimer must be in writing ² and contain the following information:³

The owner’s name;
If the owner has an agent, the agent’s name;
A description or representation of the trade mark to which the disclaimer relates;
The registration number to which the disclaimer relates; and
A description of the part of the mark that is disclaimed.

Where the request to enter a disclaimer is accepted, the Commissioner will enter the disclaimer in the register and notify the owner or licensee of the entry.

Entry of such a disclaimer will not, however, enable a mark to overcome an objection to registration under absolute or relative grounds ⁴. The purpose of a disclaimer is to “delineate the proprietor’s rights in a mark, not to confer a monopoly”.⁵

As LLoyd-Jacob J put it in Ford-Werke's Application (1955) 72 RPC at 191:

…a disclaimer does not affect the significance which a mark conveys to others when used in the course of trade. Disclaimers do not go into the market place and the public generally has no notice of them. In my opinion matter which is disclaimed is not necessarily disregarded when questions of possible confusion or deception of the public … are to be determined.

And in the Australian Airlines case [1989] 16 IPR 270:

I must observe that a disclaimer is not a mechanism or device the use of which would permit registration of something that was otherwise unregistrable. The use of a disclaimer is to delineate the proprietor's rights in a mark, not to confer a monopoly.

Nor will the entry of a disclaimer overcome an objection under section 5 that the marks in the application do not constitute a valid series. As was noted in Lynson Australia Pty Ltd’s Application [1987] 9 IPR 350, “it is of no assistance that the additional matter is disclaimed, since disclaimed matter may still contribute to the overall identity or “idea” of the mark”.

Footnotes

² See regulation 138(1) of the Trade Marks Regulations 2003

³ See regulation 138(2) of the Trade Marks Regulations 2003

⁴ See Australian Airlines case [1989] 16 IPR 270 and the GRANADA case [1979] RPC 303 at 308

⁵ Australian Airlines case [1989] 16 IPR 270

Sections

Document Actions

3. Voluntary disclaimer of trade mark by owner

Footnotes

New to IPONZ?