A recent trade mark decision by the Intellectual Property Office of New Zealand (IPONZ) provides guidelines regarding the circumstances where disclaimers should be entered on the trade marks register.
The current approach regarding disclaimers
Disclaimers are statements on the register that disclaim exclusivity to certain elements of a trade mark, such as descriptive words. A disclaimer constitutes an acknowledgement by the trade mark owner that the disclaimed elements are non-distinctive and that use of the disclaimed elements by a third party would not amount to trade mark infringement.
Under the previous Trade Marks Act 1953, all non-distinctive and descriptive trade mark elements needed to be disclaimed. Under the current Trade Marks Act 2002, a more holistic approach has been adopted and disclaimers are not generally required. Nevertheless, disclaimers can still be entered on the register at the request of the applicant, or when required by the Commissioner so as to define the owner’s rights under the registration where it is in the public interest.
Flujo v Merisant – background
In Flujo Sanguineo Holdings Pty Ltd v Merisant Australia Pty Ltd and Merisant Company 2 SARL  NZIPOTM 11, Merisant Australia Pty Ltd (the opponent) filed opposition proceedings against trade mark application 1035524 (see Figure 1) in class 30 (the trade mark application) in the name of Flujo Sanguineo Holdings Pty Ltd (the applicant).
The opponent opposed the application on the grounds that the phrases “natural like sugar… only better” and “the 100% natural sweetener” (the phrases) were descriptive and that disclaimers were required to make it clear that the phrases were available for other traders to use.
Although the opponent conceded that the trade mark as a whole was sufficiently distinctive to qualify for registration, it maintained that disclaimers were required. The opponent expressed its concern that the trade mark application was an attempt by the applicant to achieve via a back door registered rights in relation to descriptive phrases, which “would have a chilling effect on legitimate competition… and create uncertainty as to the extent of [the applicant’s] monopoly in commonplace words”.
In consideration of these issues, the Commissioner referred to the Court of Appeal case Intellectual Reserve Inc v Robert Sintes (Intellectual Reserve)  NZCA 305, which concerned a trade mark application for (see Figure 2).
In this case, the Court of Appeal had held that although the trade mark was distinctive as a whole, to avoid “any misapprehension within the market”, a disclaimer must be entered on the register that the registration gives no right to exclusive use of the words ‘family search’.
Flujo v Merisant – conclusion
In Flujo Sanguineo v Merisant, the Commissioner held that there were two relevant questions to be answered, namely:
- Are the phrases distinctive?
- If not, is there a public interest in the non-distinctive phrases being disclaimed?
The Commissioner found that the phrases were non-distinctive and were prominent visual, aural and conceptual parts of the overall trade mark. Consequently, there was a public interest in having uncertainty about the extent of rights in these phrases made clear.
It was held that the trade mark application could proceed to registration on the condition that a disclaimer was recorded on the register that the registration did not give the owner exclusive right to use the phrases.
Trade mark disclaimers are not generally required in New Zealand. However, the need for disclaimers may arise during opposition, particularly when an opponent has concerns about the rights that a trade mark registration may give to a competitor for non-distinctive trade mark elements.
If the opponent can show that the trade mark elements are non-distinctive, and are a prominent visual, aural and conceptual part of the overall trade mark, the Commissioner is likely to find there is a public interest in having a disclaimer entered on the register.
This article was first published by Managing IP. Kathleen Henning is Managing IP’s international correspondent for New Zealand.