24.1. What is a disclaimer?

A disclaimer is a limitation of the exclusive rights given by registration to use and authorise the use of a trade mark (subsection 74(1)). In general terms the owner of a registered trade mark has no right to the exclusive use of part of the trade mark they have registered - he or she has the exclusive right to use and authorise the use of the trade mark as a whole. Disclaimers used to be limited, under the Trade Marks Act 1955, to “non-distinctive” elements of the trade mark, that is, elements that were descriptive of a characteristic of the goods and/or services, were common to the trade, were geographic names or were surnames. They were also compulsory in that the Registrar would not accept an application for registration unless the appropriate disclaimers had been consented to by the applicant. Under the current provisions any part or parts of a trade mark can be the subject of a disclaimer (whether descriptive or not) however, disclaimers will not be requested by the Registrar. They are voluntary only.

1.1 A disclaimer is a voluntary limitation - it is not imposed by the Registrar as a condition of registration.

1.2 Any part or parts of the trade mark may be the subject of the limitation, whether or not the part or parts is or are capable of distinguishing.  Disclaimers are not restricted in any way and therefore are not restricted to matter that has no inherent adaptation to distinguish

1.3 A disclaimer not only limits a registered owner's exclusive rights to use the trade mark but also to authorise its use.

1.4 Only a part or parts of the trade mark may be disclaimed - the whole trade mark cannot be disclaimed.