SONN Patentanwälte – IP Attorneys

The Fate of Disclaimers in Europe

The "Postkantoor"-decision of the European Court of Justice (ECJ case C-363/99 "Postkantoor") has ruled among other points in point 6 "Directive 89/104 prevents a trade mark registration authority from registering a mark for certain goods and services on condition that they do not possess a particular characteristic." OHIM has already refused to accept some disclaimers on the basis of that finding. National trade mark offices struggle with the width of that finding.

This answer by the ECJ to the national Dutch court is due to a specific example given by it and recited in para 106 of the decision: "The national court explains in that regard that the question seeks to ascertain whether "Postkantoor" could be registered, for example for services such as direct-mail campaigns or the issue of postage stamps "provided they are not connected with a post office (= Postkantoor in Dutch)".

First, the ECJ states in para 113 that the competent authority may register the mark only for some goods but not for others. In the ensuing para 114 it states that notwithstanding this basic understanding it cannot register marks for goods or services which do not possess certain characteristics. In para 115 it explains this finding by saying that such practice would lead to legal uncertainty about the extent of protection of this mark. Third parties would not be aware that the protection conferred did not extend to those products or services having such characteristics.

This reasoning can of course not be applied generally since the limitations would normally be published as usual. But it is true that some formulations of disclaimers like the one given as example are difficult to be verified on the market.

However, looking at the general rule given in para 113 that some of the goods or services of the petitioned list could be registrable and others not, it is in the view of many national trade mark offices a question of finding the right disclaimer. The statement in question is often not so interpreted as to forbid all kinds of disclaimers. If the goods or services in the list can be subdivided into several types of real goods or services, then one kind could be allowable and the other not. For example, bicycles could be for adults or for children. Therefore, a mark "kiddy" could be held descriptive for bicycles since it states the purpose of them. But in fact, it describes only the purpose of a subclass of bicycles. Therefore, the goods "bicycles for adults" could be registrable and such a more specific limiting description of the goods can be seen to be acceptable although it contains the disclaimer "not for children".

As one can see, the boundaries of the exclusion of disclaimers by the findings of the ECJ are still to be explored.

Dipl.–Ing. Helmut Sonn