When I first started practicing in the world of trade marks, one of the most underappreciated (and often misunderstood) tools I encountered was the “disclaimer.” Clients would glance over that section of their trade mark certificate without much thought, assuming it was just legalese that didn’t matter. But as I’ve come to learn (and as I now advise every client), a disclaimer can be a powerful tool to manage expectations and avoid unnecessary conflict, if you know how to use it wisely.
What Is a Trade Mark Disclaimer?
Think of a disclaimer as a voluntary admission. When you register a trade mark, you’re asking for exclusive rights over the entire mark, but what if part of your mark is generic or descriptive? Let’s say your trade mark is “ACME BEST Tools”, and you know that the word “BEST” is used all over the industry. You might not want to claim exclusivity over “BEST” because, frankly, you can’t. It’s too common.
That’s where a disclaimer comes in. Under Section 74(1) of the Trade Marks Act 1995, you can voluntarily limit your exclusive rights by disclaiming any part of the trade mark. This doesn’t affect your overall registration. But it makes it clear that you’re not trying to monopolize terms or elements that are commonly used or descriptive.
The disclaimer essentially states the mere fact that: “Registration of this trade mark gives no exclusive right to use or to authorize the use of [i.e. disclaimed word or image].”
Key things to understand about Disclaimers
Let’s clear up a few misconceptions-
- Disclaimers Are Voluntary– Unlike the old 1955 Act, where disclaimers were compulsory for non-distinctive elements, today’s regime puts the choice entirely in your hands. The Registrar won’t impose one, it’s up to you.
- Any Part of the Mark Can Be Disclaimed– I mean any part, even if it’s capable of distinguishing. This includes words, logos, surnames, geographic locations, or even abstract design elements.
- You Can’t Disclaim the Whole Trade Mark– Only parts. You can’t file a disclaimer that basically nullifies the entire mark, i.e. that would defeat the point of registration altogether.
- Affects Exclusive Rights Only– A disclaimer limits both your right to use and authorize the use of the disclaimed part. It means others can use that specific word or element without infringing your mark.
- No Impact on Common Law Rights– A disclaimer doesn’t take away your common law rights. You can still rely on the tort of passing off if someone copies your brand in a confusing way.
How and When to File a Disclaimer?
You can submit a disclaimer request-
- Before acceptance (it will appear in the notice of acceptance)
- After registration
- Anytime during the application process
The process is simple. Just send a written notice to the Registrar, clearly stating the part of the mark you wish to disclaim. For example- “The following disclaimer has been requested under section 74(1): Registration of this trade mark gives no exclusive right to use or to authorize the use of the word ‘BEST’.”
There’s no fee for filing a disclaimer. That said, the Registrar generally accepts the wording as proposed, unless there’s a clear mistake. But remember, once a disclaimer is entered on the Register, it cannot be revoked just because you changed your mind. The reason is practical, i.e. revoking a disclaimer could expand your rights retroactively, creating uncertainty and legal risk for others relying on the Register.
Why would you add a Disclaimer?
Great question. Here’s how it usually goes-
- Negotiation Tool– Sometimes you’re in a sticky situation, maybe there’s a conflict with an earlier mark. Offering a disclaimer can help resolve the dispute without abandoning your application.
- Clarifying Scope– If your mark includes descriptive terms, a disclaimer can show you’re not overreaching, which may help during the registration process (even if not officially considered by the examiner).
- Public Notice– A disclaimer signals to others in the trade that they’re free to use that element, which can actually prevent future disputes.
Does a Disclaimer Affect Examination?
Surprisingly, no. The Registrar does not consider disclaimers during examination to determine distinctiveness under Section 41 or conflict under Section 44. The trade mark is assessed as a whole. However, a previously disclaimed element in a prior registration might be relevant under Section 44(3)(b) when assessing likelihood of confusion in some rare cases. Also, disclaimers don’t affect your ability to amend the representation of the mark. Any requested change is assessed independently of whether a disclaimer applies to that part.
Can I Change or Amend a Disclaimer Later?
Well, only under strict circumstances. If there was a clerical error or it’s fair and reasonable, the Registrar might allow an amendment. But you can’t revoke a properly made disclaimer just because your brand strategy has evolved. For example, if you disclaimed the words “DIAMOND,” “AC,” and “BEST” in one sentence. But later wanted to delete “BEST” and “AC”. Here you’d essentially be revoking “two” disclaimers, i.e. not allowed.
Final Thoughts
As an IP attorney, I’ve seen disclaimers save trade mark applications, settle disputes, and prevent costly litigation. But I’ve also seen businesses accidentally limit their rights because they didn’t understand what they were disclaiming.
If you’re not sure whether to include a disclaimer, or how to word one, it’s fine. It’s worth having a conversation with your trade mark attorney. Because at the end of the day, a few careful words can make all the difference between clear branding and legal complexities.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
