A trademark disclaimer is a declaration stating that the applicant does not have exclusivity in using specific word of a trademark by itself. Under section 17 of the Trade Mark Act 1999, it was stated that if the Registrar considered a trademark which as a whole is registrable under Section 6 but contains one or more parts which are common to the trade for some types or classes of goods, no applicant should have exclusive right thereto or which are not distinctive, the Registrar shall either order the applicant to disclaim exclusive use of the said part or parts within sixty (60) days from the date of receipt of the order or order the applicant to enter  other disclaimers necessary to define the rights of the owner of such trademark within sixty (60) days from the date of receipt of the order.” This means as long as the Registrar deemed that it is necessary for applicant to disclaim exclusive rights within 60 days if the mark contains parts that are common to the trade.

 

Several applications have been rejected because the disclaimed part is not the fundamental nature of the mark. However, in the case of Para-G v. Para 555 and Para Plus it was held that the court will look at the appearance of the mark as a whole and pronunciation of the mark in considering whether the disclaimed elements were the essence of the mark.

 

In order to prevent likelihood of citation of the disclaimed part is not the essence of the mark, applicant should conduct a search beforehand to confirm there is no similarity between the prior marks. Besides, applicant should also use distinctive words or mark in lowering the chances. If the mark contains numeral or letter, it should be more stylized, such as colour combination, font & patterns.

 

As the law is still currently inconsistent, applicants should consider whether their mark conflict with prior mark if the said mark consist of any non-stylized letters or descriptive parts beforehand. Though as stated in the above case that court would also take into consideration of the appearance and pronunciation, the chances of Registrar demanding a disclaimer is low, but never zero.