24.3. Effect of a disclaimer on registration

Date Published

Disclaimers define and clarify rights arising from registration.

3.1 The effect of the new wording “exclusive right to use” is the same as that of the wording “right to the exclusive use of” in the 1955 Act.

3.2 Registered owners cannot claim statutory rights in parts of the trade mark that have been disclaimed1.

3.3 Disclaimers only affect the registrations on which they are entered.

3.4 A person does not infringe a registered trade mark by using that part of the trade mark which has been disclaimed (subsection 122(2)).

3.5 A disclaimer is not a complete negation of rights. Disclaimers do not affect rights arising at common law and the fact that matter has been disclaimed in a registered trade mark does not prevent the owner succeeding in a passing off action 2.

3.6 Wording of the disclaimer should neither imply nor deny common law rights. In this regard, the High Court, in “Eclipse Sleep Products3 , considered the form of the disclaimer required by the Registrar under the 1955 Act “quite suitable”. However, the wording of the disclaimer will be left to the applicant or owner.

3.7 Disclaimers on the old register, kept under the repealed Act, became particulars on the new Register at commencement, and have the same effect as voluntary disclaimers (section 238).

1 Pirie v. Goodall 9 RPC 17.

2 Bayer v. Baird 15 RPC 615; the "Roadster" case, 13 RPC 35; the "Washerine" case, 6 RPC 482; and the "Lime Wine" case, 15 RPC 669.

3 (1957) pp CLR 300 at 3232-324

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