The impact of trademark disclaimer on similarity examination

Categories: Asma Raza

A Trademark is a sign of origin of the goods. Naturally, this requires components to have distinctive features and characteristics to further promote brand awareness. Many brands may contain descriptive or general content to help consumers quickly identify basic product information so that they can easily associate the brand with the product name. Typical descriptive or general elements are words or symbols that are often used to describe products identified by the brand, for example, B. product name, product characteristics or the name of the place where the products are manufactured.

These elements are inevitably used by others in a normal business context. To reconcile the exclusive rights of trademark owners with public interests, the trademark law states that the trademark owner cannot prevent other people from using these elements appropriately. If these elements are part of your trademark, the brand owner may waive the exclusive right to the elements of your trademark. This claim is called trademark exclusion.

As a small part of the trademark review notices, the trademark exclusion behavior was established in the opinion of the State Administration for Industry and Commerce on the issues relating to the trademark examination notices (Notice), which was implemented in 2000. The notice specified the circumstances in which a disclaimer may be required. For example:

Article 3: The exclusive right of a trademark is automatically rejected in the case of publicly known / used labels included in a trademark application for the name of a company.

Article 4: the applicant renounces the exclusive right on a generic name, a graphic element or an element that directly indicates the quality, main materials, functions and / or other characteristics of the products bearing his brand.

In 2002, the regulations implementing the trademark law were published. This document no longer contained explicit provisions on trademark examination notices. This indicated that the warning was no longer implemented. Although the exact term is not found in current legislation, the right to waive the exclusive right of certain elements of a trademark has been maintained in practice. A filer may voluntarily waive the exclusive trademark right on a specific part of the trademark application in the comments section of the trademark application form prescribed by the National Intellectual Property Administration. Courts will also consider trademark disclaimer, if applicable, for resolving trademark disputes.

Some trademark applicants may think that a disclaimer is a guaranteed registration step, as it can overcome any problem by rejecting the questionable part of your trademark. It is a misunderstanding. There are many criteria applied to trademark examinations in accordance with applicable regulations, such as the Trademark Act and the standards for trademark examination and testing. For example, if an application for registration of a trademark violates prohibitive provisions, it will be rejected, regardless of whether a renunciation of the trademark has been made.

Articles 10 and 11 of the Trademark Act contain a detailed list of the circumstances in which a trademark application is refused. In practice, a common feature in reactions is that some elements of a trademark application or trademark application do not match. Brand testing standards indicate that the public can easily misunderstand product features if there is no specific part of a brand that does not have specific features, and the use of brands on the designated products. Even if the applicant rejects the trademark. According to previous articles, it has to be rejected.

Another misunderstanding among trademark applicants is that the excluded part of the trademark application is excluded from consideration during the trademark review and therefore does not conflict with the prior rights of others.

The waiver of exclusive right on a particular part of the trademark can also have a positive effect on the determination of similarity. A disclaimer can help examiners identify the main and secondary elements of a trademark, especially if the rejected elements do not seem important.

In practice, the border between the main elements and other decorative or descriptive elements of signs is not always very clear, which makes it difficult for the expert to classify them. In addition, it is believed that the categorization of elements can be subjective and differ between listeners. Child elements can be confused with parent elements in comparison of similarities. From the above cases, it seems that a waiver of a trade mark waiver of an exclusive trade mark right on a non-distinctive or least distinct part of the trade mark can serve as an index to help examiners identify the main elements of a brand, allowing for accurate comparison of similarity.

The purpose of excluding a brand is to find a balance between rights and interests between the brand owner and the community concerned, so that all market participants can use indistinguishable descriptions and general elements in products and services. . notwithstanding the violation of other trademark rights. As a right holder, a trademark owner may refuse the right to a specific part of his trademark.

Although there are no explicit legal provisions, in recent years legal proceedings have allowed uniform understanding of the role and effects of trade mark exclusion through judicial practice at all levels. Brand protection is based on the principle of the whole brand. Excluding a brand does not necessarily mean that the rejected part is considered when comparing similarity. If the excluded site does not play a significant role in the brand and is not part of the scenario that you can not afford, the warning highlights the main elements of the brand, and thus helps establish similarity.

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