Trademark disclaimers are among the most practical but often misunderstood tools in Philippine trademark prosecution. They serve a dual role: preserving a mark’s registrability while ensuring that the public retains access to common, descriptive or generic terms that everyone in the marketplace should be free to use. 

This article outlines the rules, rationale, and strategic use of disclaimers under Republic Act 8293, also known as the Intellectual Property Code of the Philippines and the IPOPHL Trademark Rules and Regulations, and offers insight on when and how to comply with request for disclaimers, contest it, or avoid it during examination. 

The legal framework 

The IP Code and Trademark Rules permit registration of marks that contain unregistrable components, provided these are expressly disclaimed. The rules identify the following unregistrable matters that must be disclaimed: 

1. A generic term;  

2. A descriptive matter including a pictorial representation descriptive of the matter in the composite mark;  

3. A customary term, sign or indication;  

4. A matter which does not function as a trademark, or service mark or a trade name; or 

5. A functional portion of a trademark. 

However, disclaimers cannot cure a mark that is wholly non-distinctive, deceptive, scandalous or confusingly similar to another. In short, there must remain something registrable about the mark as a whole. Otherwise, the mark shall be refused/denied registration.  

Importantly, the IP Code clarifies that a disclaimer “shall not prejudice or affect the applicant's or owner’s rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant’s or owner's goods, business or services” (Section 126). 

The Trademark Rules provides that the basic purpose of disclaimers is to make of record, that a significant element of a composite mark is not being exclusively appropriated apart from the composite (Rule 604). It places on record that the applicant does not claim exclusive rights to such matter apart from the composite mark. 

In practice, disclaimers strike a balance between the public’s right to use descriptive or generic language, or those which should be available for use by the public, and the applicant’s right to protect a distinctive mark. They also promote clarity in the marketplace by delineating the scope of protection more precisely. 

When are disclaimers necessary? 

A disclaimer becomes necessary when a mark includes components that are unregistrable if taken alone – such as descriptive words (“delicious” for snacks), geographic indicators (“Spain” for wine), entity designations (“Inc.”, “Ltd.”), or laudatory terms or common slogans (“The Best”). 

The IPOPHL examiner will typically require a disclaimer when such elements appear in an otherwise registrable mark. To expedite the registration of a mark, the applicant may voluntarily disclaim the unregistrable matter at the time of filing the application, though this is not mandatory. Voluntary disclaimers can save time when the unregistrable component is obvious (e.g., “Pharma, Inc.” for pharmaceutical goods).  

But restraint is advised. Overzealous disclaiming can unnecessarily weaken trademark rights. When the component is arguably suggestive, part of a unitary mark, or has distinctive stylization, it is better to wait for the examiner’s assessment before conceding. 

However, disclaimers are ineffective when the entire mark is generic, descriptive, scandalous, deceptive or confusingly similar to a prior mark. In those cases, no amount of disclaiming will render the mark registrable. 

Examples of disclaimed elements of a trademark 

Below are examples of terms that were disclaimed to allow the corresponding marks to proceed to registration. 

1. The terms “digital bank” in the mark(Reg. No. 4-2021-528670) have been disclaimed for being descriptive of the following services in Class 36: “financial, monetary and digital banking services • insurance services • real estate affairs.” 

2. The following elements “Since 1932; black dark lager; world acclaimed” in the mark (Reg. No. 4-2021-530198) have been disclaimed for being descriptive of time or production of the goods, descriptive as to the kind, intended purpose and other characteristics of the goods “alcoholic beer • alcoholic lager • non-alcoholic beer • non-alcoholic lager • alcoholic and non-alcoholic beer and lager based beverages,” among others in Class 32.  

3. The term “vision” has been disclaimed in the mark (Reg. No. 4-2023-520494) for being descriptive of the intended purpose or other characteristics of the goods “eyeglasses • parts for spectacles • eyeglass cases • eyeglass pouches • spectacle lenses • contact lenses • contact lens case • containers for contact lenses by the application. covered by the subject mark” in Class 9.  

4. The term “transport” has been disclaimed in “YAMATO TRANSPORT” (Reg. No. 4-2020-505786) for being descriptive of the kind, nature, and other characteristics of the services “transport • packaging and storage of goods • travel arrangement • railway transport • car transport • carting” in Class 39. 

5. The term “mart” has been disclaimed in (Reg. No. 4-2024-527699) for being descriptive of the kind, nature, or other characteristics of the services retail and wholesale services in Class 35. 

Responding to an examiner’s request for a disclaimer 

When the examiner issues an action requiring a disclaimer, the applicant has two options: accept or contest. 

1. Accepting the disclaimer. If the element is plainly generic or descriptive, acceptance is straightforward.  

2. Contesting the disclaimer. Applicants may argue that the term or design is unitary, suggestive or has acquired distinctiveness. Supporting arguments may include: 

• Unitary mark doctrine. The components are so merged that they create a single commercial impression (e.g., “HANDYMAN,” “AIRASIA”). 

• Suggestiveness. The term requires imagination to link to the goods (“SKINSTYLUS” for skin care products and apparatus). 

• Foreign terms. The foreign meaning is not commonly understood by the relevant Philippine public. 

• Stylization or device element. The distinctiveness lies in the visual design rather than the literal element. 

• Secondary meaning. The term has become distinctive through long, exclusive use or advertising. 

If the applicant refuses to disclaim after final reiteration, the examiner may issue a Final Action under Rule 609, potentially leading to refusal. Thus, the applicant’s recourse is limited to an appeal to the Director or to compliance with the requirement/s made by the examiner. 

Opposing or narrowing disclaimer requirements 

In borderline cases, the trademark agent can argue to limit the scope of the disclaimer since partial disclaimer may be allowed with respect to some classes or some goods and/or services (Rule 604), or to avoid disclaiming minor functional words like prepositions and conjunctions.  

The key is evidence: dictionary definitions, consumer usage or proof of dual meanings can support the claim that the term is suggestive or unitary. Philippine consumer perception – given bilingual norms and mixed English-Filipino usage – also plays a vital role in assessing descriptiveness. 

Special types of disclaimers 

Pictorial representations. Descriptive images (e.g., a hamburger picture for burgers) should likewise be disclaimed. However, highly stylized designs that create a distinctive impression should not be disclaimed for broader protection. 

Entity designations. Terms like “Corp.,” “Inc.,” or “Co.” must be disclaimed unless used arbitrarily, such as in “KIDS INC.” for apparel and “MAX & CO.” for apparel and leather goods, where the term contributes to distinctiveness. 

Slogans and unitary marks. A unitary slogan that creates a single source-indicating impression (e.g., “JUST DO IT”) should not be disclaimed. If the slogan itself is descriptive (“MANILA’S BEST COFFEE”), it is unregistrable altogether. 

Entire marks. For a mark to serve its fundamental purpose – identifying the source of goods or services – it must contain something distinctive, whether in its wording, design or overall combination. If every component of a mark is descriptive, generic or incapable of distinguishing one trader from another, then the mark itself cannot function as a trademark. In such a case, disclaiming all the elements would be meaningless. A disclaimer is not a cure for non-distinctiveness; it cannot make an otherwise unregistrable mark registrable. 

Practical guidance for practitioners 

In practice, the key to handling disclaimers lies in striking a balance between cooperation and caution. While disclaimers can speed up examination, they should never be given automatically. Here are a few guiding principles to keep in mind. 

First, disclaim judiciously. Limit disclaimers to elements that are unmistakably unregistrable – such as purely descriptive or generic terms. Over-disclaiming can unnecessarily narrow your client’s rights and weaken the protection of the composite mark. 

Second, use the proper form. The IPOPHL follows a standard wording for disclaimers, which should appear as: “No claim is made to the exclusive right to use [disclaimed matter] apart from the mark as shown.” This phrasing ensures clarity and uniformity across the register. 

Third, never disclaim the entire mark. Doing so effectively admits that nothing in the mark is distinctive. If the mark as a whole cannot function as a source identifier, a disclaimer cannot make it registrable. 

Fourth, preserve potential distinctiveness. Avoid disclaiming components that might, through use and marketing, later acquire secondary meaning. Once disclaimed, it can be difficult to reclaim rights in those elements later on. 

Finally, always argue from the consumer’s perspective. Philippine consumer perception –particularly in a bilingual market – often determines whether a word is descriptive or suggestive. A term that seems descriptive in one language may not be perceived the same way by the average Filipino buyer. 

In short, disclaimers should be used with purpose and precision. They can facilitate registration when properly applied, but when used indiscriminately, they risk surrendering valuable rights that time and use could otherwise strengthen. Trademark disclaimers are not mere formalities. When used wisely, they are strategic tools that facilitate registration while preserving meaningful protection for distinctive branding. When misused, however, they can erode valuable rights. 

As the Philippine trademark landscape continues to evolve alongside global branding trends, the use of disclaimers remains both a procedural tool and a strategic consideration. For practitioners, the real skill lies in knowing when to concede, when to contest and when to craft the narrative that a composite mark, viewed as a whole, remains distinctive. A well-placed disclaimer can streamline registration without diminishing a brand’s strength; an unnecessary one, however, may give away rights that could later prove valuable. Ultimately, each case demands a careful reading of the mark as a whole – its meaning, impression and how consumers perceive it. In a jurisdiction where language, culture and commerce intersect so dynamically, the most effective practice is not merely to follow the rules, but to understand the intent behind them: to protect distinctiveness while keeping the marketplace fair and open for all. After all, the goal of the system is not to restrict creativity but to ensure that trademark rights coexist with fair competition.