Trademark Disclaimer” Proposed To Turn from Being Required to Voluntary. Most Experts Suggest Maintaining the Status Quo On Concerns over Mark Holder’s Scope of Right.

E080514Y2 Jun. 2008（E103）

TIPO has included in its proposed amendment to the Trademark Act the changing of the disclaimer of exclusive use from being a requirement to a voluntary declaration. In other words, under the proposed amendment, the applicant will have the sole discretion to or not to lodge the disclaimer. As the said proposed change will affect the scope of the rights of the mark holder, many experts suggest the current regime should stay.

“Disclaimer of exclusive use” is the declaration the trademark applicant shall make upon application to disclaim the exclusive right to use the descriptive, functionary or generic portion of the mark.

TIPO official explained by giving the Tatung Rice Cooker mark as an example. If Tatung Company (Tatung) disclaims the right to the exclusive use of the Rice Cooker portion of the mark upon application for registration of the mark for use on electrical appliance, Tatung will be able to claim a broader scope of rights in the mark. On the contrary, if Tatung insists on using the mark as a whole as the registered mark, then the scope of its right in the mark would be limited when another person uses Tatung alone on, for example, refrigerators.

TIPO plans to make public the full text of the proposed amendments by the end of 2008 and will hold public hearing(s) to invite opinions from all sides.

Opinions on Trademark Disclaimers
	TIPO	Experts/Scholars
Position	Trademark disclaimers having changed to voluntary declaration, the trademark examiner will no longer need to examine the accuracy of the disclaimer or whether the disclaimer is necessary. The examiner will examine the distinctiveness and only the distinctiveness of the mark as a whole.	The current regime of requiring the disclaimer upon application should stay.
Reasons	1. The range of the effect of the registration will be determined according to the actual use of the mark by the authorized users in the market. 2. The examination process will be shortened in time.	1. Specification of the mark could risk lack of clear definition. 2. By reference to the US and Canadian practices, it is advisable for the trademark authority to notify the applicant to lodge the disclaimer before conducting the examination of the application.