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Disclaimers and limitations

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Lawdit Solicitors - Expert Author

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11 October 2009

Disclaimers, positive limitations, limitations, restrictions all have similar connotations in ordinary language. They connote different allowable amendments to trade mark specifications in order to overcome objections to registrations.

Section 13 of the Trade Marks Act 1994 (the Act) that the entry of a disclaimer or limitation is voluntary and may be made prior to, or post, registration.

Nestle SA Trade Mark Application in 2004 is the leading case in this area. Disclaimers cannot disclaim more than originally claimed, for obvious reasons. 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.

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]

A disclaimer alerts the Examiner to an admission that the disclaimed component of the earlier mark is not, by itself, distinctive of the proprietor goods and/or services. Therefore its presence in another trade mark cannot give rise to a likelihood of confusion.

However an offer to disclaim exclusive rights to a component of a later trade mark will not assist in overcoming a requirement to notify alone, because an admission made by a later applicant cannot affect the scope of an earlier trade mark.

Tim Mount is a trainee solicitor at Lawdit, contactable at tim.mount@lawdit.co.uk


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2009-10-16 19:59:59 in Legal Articles

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