I move amendment No. 9:
In page 15, between lines 21 and 22, to insert the following subsection:
"(2) Where the trade mark contains an element which is not distinctive, and where the inclusion of said element in the trade mark could give rise to doubts as to the the scope of protection of the trade mark, the Controller may request, as a limitation to any registration of said trade mark, that the applicant states, as an entry on the Register, that it disclaims any exclusive right to such element.".
The Bill provides only for the optional entry of a disclaimer. The purpose of a disclaimer entry is stated in rule 27 of the Trade Mark Rules, 1963, so that the public understand the applicant's rights. Failure to impose a mandatory system for entering disclaimers in certain cases would mean that the public would no longer have a system for identifying the scope of a proprietor's protection. In some cases this may be obvious but in others it is not. There are numerous instances in which it is possible to determine rights only by the absence or presence of a disclaimer's entry. The absence of a mandatory disclaimer system will undoubtedly lead to claims of infringement which may be unjustified but which will require litigation to resolve. It is surely preferable to have a system which indicates rights on the register.
It is not just the public who will be uncertain, it will create severe difficulties in the examination of applications by the Trade Marks Office. The disclaimer system assists examiners in determining registrability and whether to cite a trade mark as confusingly similar to an earlier trade mark. If there is a disclaimer, an examiner can consider the possibility of co-existence because of the non-distinctiveness of a disclaimed element. With no system for imposing disclaimers, this task becomes extremely onerous and, indeed, could result in a large number of refusals.
Examples of the usefulness of the mandatory disclaimers requirement is to be found in almost every issue of the fortnightly publication of the Patents Journal. However, to give a specific example, I refer to Irish Trade Mark Registration No. 166297 — Season’s Best by Tropicana in respect of certain drinks. This has disclaimers against the words “Season’s Best”. Thus, it is clear to the public that the rights are an entire trade mark and do not extend to those two particular words.
The amendment proposed exists under current law and is also in Article 38 (2) of the EU Regulation on the Community Trade Mark.
