Section 23 of the Trade Marks Act (Chapter 385) is the tool that lets a composite mark be registered as a whole without granting a monopoly over the ordinary words inside it.
Section 23(1) — the trigger
(a) contains parts that are not separately registered in the name of the proprietor as trade marks, or are not the subject of separate applications by the proprietor; or
(b) contains matter that is common to the trade or is otherwise not distinctive,
the Registrar or the Court, in deciding whether the mark may be registered or remain on the Register, may in his or its discretion require as a condition that the proprietor:
(c) disclaim any right to the exclusive use of any of those parts, or of that matter; or
(d) make such other disclaimer as the Registrar or the Court considers proper for the purpose of defining the rights of the proprietor under the registration.
Note who may impose it: the Registrar or the Court — and at either of two moments, deciding whether the mark may be registered or whether it may remain on the Register. So a disclaimer can be required on examination, in an opposition, or years later in rectification proceedings under section 13.
What is typically disclaimed
| Element | Why |
|---|---|
| Descriptive words — naming the product, its quality, ingredients or purpose | Every trader needs them; they fail section 15(1)(d)(i) |
| Geographical names | Other traders from the same place may honestly use them; excluded by s 15(1)(d)(ii) |
| Surnames | Namesakes may honestly trade under them; also excluded by s 15(1)(d)(ii) |
| Matter common to the trade — devices and get-up everyone in the sector uses | Expressly named in s 23(1)(b) |
| Numerals, letters, measurements | Rarely distinctive on their own |
| Company or business type words — “Limited”, “Trading”, “Services” | Not distinctive of anyone |
| A word that has become generic | Section 47(4) expressly contemplates a disclaimer as the condition of the mark remaining |
A disclaimer under paragraph (a) is directed at parts not separately registered, or the subject of a separate application, in the proprietor’s name. So if the element in question is genuinely distinctive on its own, filing a separate application for it — or a divisional application under section 34, which may keep the original date — can remove the basis for the requirement.
What a disclaimer actually does
A disclaimer does not affect the rights of the proprietor of the trade mark that do not arise out of the registration of the trade mark.
A disclaimer gives up the statutory claim to exclusive use of the disclaimed element. It does not give up:
- rights in passing off, which rest on reputation, not on the Register;
- copyright in the artwork under the Copyright and Neighbouring Rights Act 2000;
- rights under any other registration the proprietor holds; or
- the right to enforce the mark as a whole — which is what was registered.
Nor does a disclaimer stop the proprietor using the disclaimed element. It affects the scope of the monopoly, not the conduct of the business. What it means in an infringement action is that the case must be built on the mark as a whole: a defendant using only the disclaimed word, and nothing else of the mark, is not infringing by reason of that word alone.
How a disclaimer is entered and changed
- On acceptance. Under section 33(1) the Registrar may accept subject to conditions or limitations, and section 49(2) makes the rights subject to them.
- By later entry. Under section 11(1)(e) the Registrar may, on the proprietor’s application, enter a disclaimer or memorandum relating to the mark — provided it does not in any way extend the rights given by the registration. A voluntary disclaimer can therefore be offered to settle an opposition or an objection.
- By the Court. Under section 13 the Court may amend an entry, insert a condition or limitation that ought to be inserted, or vary a registration; and under section 47(4) it may require a disclaimer as the condition of a mark remaining on the Register.
- Appeal. A person aggrieved by the Registrar’s decision under section 11 may appeal (s 11(2)); an applicant aggrieved by acceptance subject to conditions and limitations may appeal under section 33(7)(a).
Disclaimers, conditions and limitations compared
| What it restricts | Source | |
|---|---|---|
| Disclaimer | The claim to exclusive use of part of the mark | s 23; enterable under s 11(1)(e) |
| Limitation | The exclusive right as to mode of use, area within Papua New Guinea, or export goods | Defined in s 1; imposed under ss 26(1), 33(1) |
| Condition | Anything else the Registrar or Court thinks fit — and breach is a ground for cancellation or variation | ss 33(1), 40(6)(b), 41(3)(b); s 13(2) |
All three are recorded on the Register and all three narrow the registration. Section 55(2) completes the picture: where a mark is registered subject to conditions or limitations, it is not infringed by use in circumstances to which, having regard to them, the registration does not extend.
Should you accept a disclaimer?
Usually, yes. The alternative is refusal and lapse under section 36, which costs the priority date. A registration with a disclaimer still gives the exclusive right to the mark as a whole, still blocks later applicants under section 24, and still supports an infringement action.
Resist only where the disclaimed element is the mark — where disclaiming it would leave nothing enforceable. In that case the better answers are evidence of acquired distinctiveness under section 15(2), a separate application for the element itself, or Part B registration under section 33(5).
Sources
- Trade Marks Act (Chapter 385) — ss 1, 11, 13, 15, 23, 24, 26, 33, 34, 36, 40, 41, 47, 49, 55
- Copyright and Neighbouring Rights Act 2000
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.