What is the purpose of trademark disclaimers? Espie Angelica A. de Leon explains how they work and why they matter for fair competition and trademark rights.

Holiday Inn. Domino’s Pizza. Microsoft Corporation. American Airlines.

All are globally recognized brands. All are registered trademarks. Despite these, certain elements or parts of each of these marks may be used by business competitors without infringing the brand owners’ rights to the trademark. That’s because the right owners made trademark disclaimers.

What is a trademark disclaimer, and what is its purpose?

A trademark disclaimer is a legal statement by the trademark registration applicant expressing an intent to disclaim the said portion or part of the mark covered by the application. This means the applicant is not claiming exclusive proprietary rights over the said elements or portions of the mark. The reason: They are non-distinctive and therefore cannot be registered.

The non-distinctive parts of the trademark are those that are generic or terms commonly used in the industry; descriptive such as “delicious” for food products and “cold” for ice cream; laudatory such as “best” or “premium”; indicative of the character, quality, purpose or nature of the relevant goods or services as well as locations indicating the product’s origin. This could be a word or words included in the trademark. “For instance, the word ‘Health’ in Apollo Health for hospital or healthcare services, or ‘Consumer’ in Tata Consumer for consumer goods, may be required to be disclaimed,” said Aditi Verma Thakur, managing partner at Aishani Partners in Bengaluru.

Labels like “Corp,” “Inc.” and other entity designations or business identifiers also require trademark disclaimers.

In the case of the four examples above, the following were disclaimed: “Inn,” “Pizza,” “Corporation” and “American.”

The disclaimed element may also be a specific colour combination used in the trademark or a common industry symbol, design or pictorial representation that is descriptive of the product or service, unless it is highly stylized. One example of a descriptive pictorial representation is an image of a hamburger for a burger fast-food chain.

The applicant makes the disclaimer voluntarily at the time of filing the trademark registration application or upon request of an examiner. “During the examination procedure, if the examiner is of the opinion that the non-distinctive element could give rise to doubts as to the scope of the trademark right, the examiner will then issue an office action and request the applicant to make a trademark disclaimer to such element,” explained Yvonne Lin, managing partner at Formosan Brothers in Taipei.

Without a trademark disclaimer, the application will be denied.

“The logic for a disclaimer flows from the basics of trademark law that no single party should be allowed to have exclusive rights over generic, descriptive or other non-distinctive words that are generally required to be used by other traders in the same business. Such matter must remain available for common use in trade, even if it forms part of a brand logo or a composite mark,” Thakur noted.

According to Lin, the absence of a disclaimer would blur the protected scope of trademark rights and inconvenience industry competitors who might want to use these non-distinctive elements for their own marks. “Such would be against the concept of fair competition within the market,” she remarked.

Marcus Liu, director at Amica Law in Singapore, added that trademark disclaimers may be useful in post-registration co-existence scenarios. “For example, competing parties with overlapping trademark rights may, in the course of commercial negotiations, agree to limit their rights to a trademark to segregate their acceptable spheres of business from each other, and to enshrine this, they may apply for a voluntary disclaimer of their registered trademark rights. This tends to be more convenient than restricting specifications and/or filing new applications which require refiling, re-examination or re-publication,” he said.

However, disclaiming a specific part of the trademark does not mean this particular portion is excluded from the mark. It also does not prevent the proprietor from claiming rights in the composite mark as a whole. Additionally, it does not diminish the strength of protection over the trademark. “The disclaimer only means that exclusive rights are not claimed over that particular non-distinctive element standing by itself,” Thakur pointed out.

Lin provided other examples of trademark elements that were disclaimed:

• “Diving” for the goods of swimming suits. “As the wording ‘diving’ is a direct and obvious description of the purpose of the goods, and the wording and the design are equal, it could give rise to doubts as to the scope of the trademark rights, hence a disclaimer was made,” she explained.
• “508” in PEUGEOT 508 for cars and their parts and fittings, vehicle engines, etc. “As ‘508’ signifies the model number of the goods, a disclaimer was made,” Lin said.
• “Kakaw” for chocolate cake, chocolate powder, chocolate paste, etc. “Kakaw” is cocoa in the Filipino language and is descriptive of the ingredients of the goods. Therefore, “kakaw” is not distinctive. “Considering that Filipino is not commonly understood by locals, to avoid doubts relating to the scope of trademark rights in such a word, a disclaimer was made,” she noted.
• The slogan “Enjoy your life” for data carriers recording computer programs, optical data carriers recording computer programs, etc.

A few other examples of disclaimed elements of trademarks in the Philippines are: “digital bank” in UNO Digital Bank, “Yamato” in Yamato Transport, “Christmas” in Simply Christmas, which is owned by wholesaler Rockport Patterson Market Supply Inc., and Operation Christmas Child, owned by the humanitarian aid organization Samaritan’s Purse.

However, it must be noted that trademark disclaimers are generally not necessary if the mark as a whole is sufficiently distinctive and therefore registrable. “There is well-established authority that even marks which are comprised of individually descriptive elements may have distinctive character and be registrable when viewed as a whole,” said Liu. “The upshot of this is that a disclaimer of any particular element would be unnecessary, assuming the mark is distinctive and registrable when considered as a whole, and there is thus no practical benefit to restricting the conferred rights. If the mark was not distinctive and registrable when considered as a whole, disclaimers would not be able to make it registrable in any event.”

Also, a word does not ordinarily require a disclaimer merely because it is common or qualifying in nature. “If it is not descriptive or directly connected with the relevant goods or services, a disclaimer may not be necessary,” said Thakur. One example she gave is “Classic” for cigarettes.

Trademark disclaimers can also be made for geographical areas and/or manners of use. “For example, it can restrict the use of the relevant mark to specific parts of Singapore, or prevent the use of the mark on social media or prevent the use of the mark on subsets of specified goods. Ordinarily, this would not have much use or benefit, but it could become relevant where there is agreement to limit rights based on a co-existence agreement,” Liu added.

Disclaimers aren’t an automatic part of trademark applications, but they do come in handy when some parts of the mark are generic and therefore unregistrable. By filing a trademark disclaimer when necessary, the applicant not only prevents confusion, but he also helps promote fairness in the marketplace by allowing other businesses to use the disclaimed elements of his own trademark without infringing his rights.