A recent inquiry from an enterprise reported that after submitting a trademark application in Cambodia, they received an office action requiring them to disclaim exclusive rights to two letters and the Chinese characters within their trademark. This is not an isolated case in Cambodia but a frequent "common challenge" enterprises encounter when expanding their trademark portfolios internationally. Whether in Southeast Asian countries like Vietnam and Thailand, or in European and American markets like the EU and the US, it's commonplace for trademark offices to require enterprises to disclaim exclusive rights to parts of their marks due to "lack of distinctiveness of elements" or "conflicts with prior rights."
Essentially, the core principles of trademark examination are highly consistent across most countries globally: the core value of a trademark is to "distinguish the source of goods/services." If certain elements cannot fulfill this function (due to lack of distinctiveness) or might infringe upon others' prior rights, it becomes necessary to "disclaim exclusive rights" to those non-core parts, ensuring the registered trademark meets the requirements of being "distinctive and conflict-free."
Example: An enterprise applied for a composite mark consisting of "letters AB + Chinese characters 'XX' + device." Because "AB" is a common letter combination and "XX," when simply translated into English, directly describes the characteristics of the goods, they were required to disclaim exclusive rights to these two parts. This aligns with the examination standards in many Southeast Asian countries (e.g., Vietnam, Thailand): priority is given to protecting "elements with unique distinctiveness," preventing common elements from being monopolized by a single entity. A similar logic applies in European and American markets.
Common Misconceptions: "Disclaimer of Exclusive Rights" ≠ "Abandoning the Trademark"
Common Misconception | Actual Situation | Typical Case Reference |
Disclaimer means the entire trademark becomes invalid. | Only the exclusive right to the "specified elements" is disclaimed. The overall trademark (e.g., the combination of "disclaimed elements + device / distinctive text") can still be registered normally. The scope of protection focuses on the "core elements not disclaimed." | An enterprise applied for the mark "Green + Device + Chair" in the EU. They were required to disclaim rights to "Green" (a common color term) and "Chair" (the product name). Ultimately, the "Device" became the core protected element; others cannot use the "Device + similar text" combination. |
After disclaimer, others can freely use my trademark. | Others may use the "disclaimed elements" alone (e.g., the letters "AB" disclaimed in the Cambodia case). However, they cannot use a "combination similar to your overall trademark," as this would constitute infringement. | An enterprise disclaimed rights to "Tech" in the US. A competitor using "Tech" alone for promotion would not infringe, but using "Tech + the same device as that enterprise" was judged as similar and infringing. |
The trademark becomes useless in the target market after disclaimer. | If the "core elements not disclaimed" (e.g., a unique device, specially designed letters) are the core identifiers of the brand, they can still effectively prevent counterfeiting – especially in markets where consumers rely on "visual recognition" (e.g., Southeast Asia, Latin America). | An FMCG company disclaimed rights to Chinese characters in Thailand but retained its unique "Smiling Face Device." It later successfully prevented a local company from copying its packaging by enforcing its rights based on the device. |
Instead of reacting passively after a rejection, it's better to plan holistically before application to reduce the probability of needing a disclaimer from the source. Consider these two key suggestions:
1. Avoid "Cross-Market Generic Elements"
For instance, combinations like "Number + Generic Word" (e.g., "5G Tech") or simple letter combinations (e.g., "CD," "EF," "JK") are prone to disclaimer requirements due to lack of distinctiveness in most countries. Prioritize combinations of "Device + Distinctive Text" (e.g., "Xiaomi's 'MI' + orange device," where the core elements are highly distinctive, leading to a higher examination approval rate).
2. Adopt a "Modular Design" for Trademarks
When designing a trademark, split it into "Core Element(s) (e.g., unique device) + Auxiliary Element(s) (e.g., text, letters)." If auxiliary elements are required to be disclaimed in a particular country, the core element(s) can still independently support brand recognition. For example, a home appliance company designed its trademark as "Wave Device + Chinese '海顿' + English 'HAYDN'." After disclaiming the Chinese text in Cambodia, the "Wave Device + English" combination could still be used as the core identifier, without affecting brand perception.
Conclusion: The Cambodia case requiring a disclaimer essentially reminds enterprises that international trademark strategy is not merely an "application action in a single country." Rather, it is a "systematic project" that requires considering the examination rules of different markets, brand usage scenarios, and enforcement costs. When faced with a rejection requiring a "disclaimer of exclusive rights," there's no need to panic. The key is first to clarify the local examination logic and assess the brand impact, then formulate an adaptive strategy. More importantly, conduct global screening and design planning before filing applications, ensuring trademarks can both pass examination in various countries and support the brand's long-term development in the global market.
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