24.6. Revocation of disclaimers

Date Published

Subsection 74(4) states that a disclaimer properly made may not be revoked. The Working Party to Review the Trade Marks Legislation intended that once a voluntary disclaimer was put on the Register it would remain there. Allowing disclaimers to be taken off once put on the Register would widen the scope of the monopoly and would bring uncertainty into the system. For example, although a trader had inspected the Register and found that their use of a part of a trade mark did not infringe another trader’s trade mark because that part was disclaimed, revocation of the disclaimer at a later stage could result in them unintentionally infringing that other person's trade mark.

6.1 A disclaimer made in the old register under the 1955 Act will be taken to have been made in the Register kept under the 1995 Act on the commencing day. Since section 207 authorises the making of those entries they cannot be challenged as not being properly made in the Register unless a clerical error occurred in their transfer from the old register to the new Register.

6.2 A voluntary disclaimer under the 1995 Act, would be “properly made” in the Register, if it meets the following requirements:

  • the applicant for registration or registered owner of a trade mark makes a request in writing to disclaim any exclusive right to use, or authorise the use of, a specified part of the trade mark, and
  • the Registrar correctly enters the particulars of the disclaimer in the Register.

A disclaimer entered on the Register by order of a court, will be taken to be properly made.

6.3 Where the wording of a disclaimer includes more than one part of a trade mark each part disclaimed in that wording is treated as being the subject of a separate disclaimer. Therefore wording along the lines “Registration of this trade mark will give no exclusive right to use or to authorise the use of the word BEST, the letters AC and the device of a DIAMOND” actually constitutes three disclaimers. If, for example, a request was made to delete from the above wording the word BEST and the letters AC, the request would be treated as constituting a revocation of two separate disclaimers and would not be allowed if the disclaimer was properly made.

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