What happens when you want to get a composite mark, which has both distinctive and non-distinctive elements, registered as a trademark? The answer is this – you simply have to disclaim that you claim no exclusive rights over the particular element or elements of the mark that the Registry concludes to be unregistrable standing alone on account of it being more of a generic term, to limit and define the rights of the proprietor, after which allowing you to proceed toward getting your mark registered. So basically, the disclaimer allows you to get your mark registered as a whole despite the fact that the mark contains certain words or graphic elements that cannot be registered on their own.
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For example, for the trademark registration of CADBURY GEMS, the word “Gems” was required to be disclaimed. The reason being “Gems” is a generic term which cannot be registered independently but when put with the brand name “Cadbury”, it is considered to be distinctive in nature. The reason for disclaiming the term “Gems” is so that the proprietor is restricted from claiming overgenerous rights over the use of the generic term “Gems”. In other words, its purpose is to prevent giving a false impression to the extent of the trademark holder’s rights to the disclaimed elements.
The next question that arises is what happens when you are asked to disclaim say, three out of four words in your mark? In plain words, you have three options, first, proceed with the registration and disclaim the words required to be disclaimed or second, oppose the requirement of disclaiming and third, abandon the application and seek registration of a more fanciful and non-descriptive term suitable for your mark.
Why the need for disclaimers?
It is an established fact that certain categories such as generic, descriptive, geographic, well-known symbols, common in the trade or suggestive marks cannot be registered as a trademark independently.
The Supreme Court of India while explaining the scope of disclaimers has held that “The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade mark. The disclaimer is only for the purposes of the Act. It does not affect the rights of the proprietor except such as arise out of registration.”
However, a different angle to the whole concept of disclaimers was seen in the case of Aggarwal Sweet Palace and ors. Vs. Assistant Registrar of Trademarks, where the Assistant Registrar had required the applicant to disclaim the words “Sweet” and “Corner” which was the actual subject mark. Consequently, the applicants had agreed to disclaim both the words as they claimed extensive usage of the mark. Later on, there was a third party opposition against the mark “Sweet Corner” which was rejected by the Assistant Registrar and that party appealed to the Deputy Registrar and then to the IPAB; but all their efforts went in vein as the IPAB held in favor of the Respondents by stating that though both the words of the mark has been disclaimed separately, that fact does not hinder the registration of the mark as a whole when there is evidence of the mark being used continuously.
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Effect of disclaimers:
It is known fact that upon registration the owner of the trademark can prevent unauthorized third parties from using the trademark, including use of disclaimed trademarks. Also, in determining whether two marks are confusing, the trademarks will be considered in its totality, as laid down under Section 17 Clause (1) of the Indian Trademarks Act, 1999. On the other hand, upon reading Section 17(2) it can be understood that the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters which he disclaims. So if the proprietor desires statutory protection to the exclusive use of any part of the trademark, then he has to apply to register that part as a separate trademark. Further it is clear from a cursory reading of the section, that any part of the trademark containing a matter which is common to the trade or is of non-distinctive character will not be allowed registration.
So this is all you need to know:
First, disclaiming a part of your trademark does not mean that the said part has been removed from the mark; it simply means that you cannot prevent others from using that part of the mark;
Second, the marks must be compared as a whole for determining if there is infringement without reading any disclaimer in any part thereof even if the similarity is in respect of descriptive marks;
Third, you can still register a mark consisting of fully disclaimed terms as long as there is enough evidence furnished for extensive and continuous usage of the mark;
And fourth, you can subsequently register the disclaimed portion independently, if the disclaimed matter becomes distinctive in the context of the applicant’s goods or services; thereby giving you a right to completely exclude others from using the descriptive mark.