Practice Amendment Notice

PAN 13/06 - Issued 25 May 2006

This notice affects Examination Practice in relation to wording of Disclaimers and Limitations

The Registrar’s Practice regarding wording of disclaimers and limitations has been added to Chapter 6 of the Trade Marks Work Manual. The addition of this practice leads to the creation of a new paragraph of the manual – paragraph 62.

62 Wording of Disclaimers and Limitations

It is clear from the wording of Section 13 of the Act that the entry of a disclaimer or limitation is voluntary and may be made prior to, or post, registration. However, there are two conditions which must be met.

Firstly, the volunteered disclaimer or limitation must either disclaim any right to the exclusive use of a specified element of the trade mark, or it must limit the rights conferred by registration. The use of a limitation to add in elements of the trade mark that were absent at the outset is not a limitation of the rights conferred by registration, and is not therefore permissible. See Nestle SA Trade Mark Application [2005] RPC 5.

Secondly, the disclaimer or limitation should be worded in such a way as to make it tolerably clear to third parties what its effect is. Accordingly, whilst the registrar cannot and will not insist on standard wording for disclaimers and limitations, he has an inherent power to require clarification of the wording of a proposed disclaimer or limitation which leaves room for serious doubt as to the effect of the voluntary disclaimer or limitation of rights.

It is suggested that limitations take the form "The rights conferred by the registration of this mark are limited [description of limitation]." And that disclaimers take the form "Registration of this mark shall give no right to the exclusive use of [description of element(s) of trade mark to be disclaimed]."