Trademark disclaimers a specific statements used to indicate that certain elements within a trademark, such as text, imagery, or symbols, are not claimed to be the exclusive property of the trademark applicant or holder. The disclaimer is typically used in cases where a trademark includes commonly used or descriptive words, phrases, or symbols.
If a company uses the name “CC Music” as a trademark to advertise its music services, it may need to include a disclaimer for the word “Music” in its trademark application. This is because “Music” is a descriptive term, and other music companies may also use this term to describe the music services they offer.
This type of disclaimer helps ensure that the public is not misled into thinking that a common word or descriptive element is the exclusive symbol of a particular company, and it also ensures that other trademark users can still use these common or descriptive words.
Trademark Act
According to the provisions of Article 29, Paragraph 3 of the Trademark Law, if there is doubt regarding the non-distinctive elements included in a trademark design, a disclaimer is required to obtain registration in order to clarify the scope of trademark rights.
The Intellectual Property Office’s examination criteria and special regulations, along with explanations, for the consideration of making a disclaimer when non-distinctive elements are included in a trademark design and might create doubt about the scope of trademark rights, including the following factors:
(1) In cases where a non-distinctive element in the design is a combination of words that describes the specified goods or services and is not commonly used by the applicant or others in the industry, there is a possibility that the applicant might mistakenly believe they have exclusive rights over that part. Furthermore, it might create doubts among consumers and competitors as to whether the applicant has obtained trademark rights for that particular element. In such cases, a disclaimer should be made.
(2) Other non-distinctive marks beyond descriptive and generic names, such as surnames, slogans, idioms, popular phrases, and non-descriptive text, are typically favored by businesses or individuals who wish to obtain exclusive rights over them. In cases where it is determined that such marks lack distinctiveness, a disclaimer should generally be made to prevent the applicant from mistakenly believing that they can assert exclusive rights over that part. However, for commonly used auspicious or promotional advertising terms in the market, where consumers and competitors do not doubt that the trademark owner has exclusive rights over such terms, a disclaimer is not required.
(3) In cases where two or more Arabic numerals, models, marks, and the like are determined to lack distinctiveness, a disclaimer should generally be made. However, if the meaning of the numbers represented is clear (such as specifications, quantities, times, years, etc.) or if the numbers are commonly used in the industry to represent auspicious or lucky meanings, it may be deemed that there is no risk of creating doubt regarding the scope of trademark rights, and a disclaimer is not necessary.
(4) The position, font size, or proportion of non-distinctive elements in the design may affect the applicant’s judgment on whether they want to obtain trademark rights over that part. For example, if a non-distinctive element in the trademark design is intentionally designed to be significantly enlarged or highlighted, creating doubt about whether rights are claimed over that text or graphic, a disclaimer should be made. However, there are cases where it is not necessary to make a disclaimer, and these are not subject to this requirement.
Not required to declare disclaimer: Non-distinctive matters that do not give rise to doubt about the scope of trademark rights
- Generic names for goods or services, such as “bank” or “pizza.”
- Text indicating the quality, purpose, ingredients, origin, or relevant characteristics of goods or services, such as “organic,” “waterproof,” “WATER-PROOF,” “delicious,” “selection,” “GREEN TECH,” “ORIGINAL.”
- Self-promoting descriptive terms, such as “master,” “expert,” “doctor,” “guru,” “artisan,” and “doctor.”
- Terms related to the design of goods or services, such as “handcrafted,” “cultural and creative,” “art,” and “space design.”
- Modes or patterns of service provision, such as “marketing,” “online,” “online store.”
- Geographic names: Descriptions related to the place of origin, place of provision, or other relevant information for goods or services, including old place names still widely recognized, such as “MADE IN TAIWAN.”
- Decades and time-related terms, such as “ESTD” followed by a year, wine production year, or cellar aging year.
- Text indicating the type of company, such as “Co, Ltd,” “Corp.,” “CORPORATION,” “Inc.,” and “LLC.”
- Text indicating business combinations, organizational structure, or nature of business/industry type, such as “industrial,” “financial,” “food,” “trade,” “INTERNATIONAL TRADE,” “information,” or “MANUFACTURING.”
- Text indicating the provider of goods or services, shop, or location, such as “canteen,” “store,” “plaza,” “restaurant,” “noodle shop,” “boutique,” “hand-brewed coffee shop,” “SHOP.”
- Religious and folk symbols or terms, such as the Bagua diagram, Tai Chi diagram, Buddhist swastika symbol, and religious expressions like “Amen,” “Hallelujah,” and “Namo Amitabha Buddha.”
- Generic symbols: Universal symbols related to specified goods or services, for example, the Caduceus symbol, single serpent rod symbol, medical cross symbol, prescription mark (commonly written as Rx) used in the medical industry.
- Combinations of the above-listed elements, such as “Premium Longtan Tea,” “Classic Handmade Chocolate,” “Natural Handmade Soap,” and “Herbal Cream.”
- Numerals, single digits 0-9, commonly recognized descriptive numerals like “304” for stainless steel; auspicious and lucky homophonic numerals like 168 (meaning “one road to prosperity”), 888 (meaning “prosper, prosper, prosper”), and 777(lucky 7).
- Common congratulatory and auspicious phrases, such as “恭喜發財” (Gong Xi Fa Cai – “Congratulations and prosperity”), “招財進寶” (Zhao Cai Jin Bao – “Attract wealth and treasures”), “吉祥如意” (Ji Xiang Ru Yi – “Auspicious and smooth sailing”).
Source : TIPO
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Author
吳靜芸 Gena Wu
商標專員