Examination Guidelines for Trademark Disclaimers to Take Effect in 2010.

The new Examination Guidelines for Trademark Disclaimers will replace the previous Main Points for Examination of Disclaimers to take effect in 2010.  A disclaimer of an obviously non-distinctive word or design of a proposed trademark will no longer be required to be in line with international trademark practices.

“Trademark disclaimers” refers to a trademark applicant’s consent to disclaim exclusive right to use any descriptive or non-distinctive word or device element, etc. of a proposed multi-word composite mark.  According to the previous regulation, in the example of the trademark “大同電鍋” (“Da Tung Steamer Rice Cooker” in English), the words“電鍋” (steamer rice cooker) of this trademark are descriptive with respect to the product itself, and thus the applicant would be routinely required to make a disclaimer of the exclusive right in and to the words.

The provisions of trademark disclaimers are mainly attributable to the common situation that multi-word composite marks always include word or device component(s) that descriptively indicates the product, quality, function, or place of origin.  Therefore, it is necessary to request disclaimer of exclusive right to use such descriptive words or components to avoid monopoly on such words or components by some trademark owners.

The new Examination Guidelines for Trademark Disclaimers provide new examination standards that will give applicants more precise, simplified, and detailed criteria for dealing with disclaimers. (2009.10)
/CCS