The Court of Justice of the European Union issued a decision on 12 June 2019 (C-705/17) accepting that the element of a compound trademark to which the disclaimer relates cannot be excluded from the global analysis of the relevant factors for determining the existence of a likelihood of confusion, and that the element cannot be assigned limited importance in such analysis in advance. Hence, it seems that the disappearance of this concept is fast approaching.
As we have been noticing, EUIPO has already been applying this recent decision when assessing the likelihood of confusion between compound marks whose elements are subjected to a disclaimer. It should be noted that, even though protection has not been claimed over such element, its presence in a composite sign cannot be simply left aside.
In our view, a waiver to the exclusivity right over the evoked idea is a different issue. For instance, such waiver can fall on a sign that recalls generic terms, as the sole purpose of the disclaimer is, on the one hand, avoiding objections of lack of distinctiveness and/or descriptive character, and, on the other hand, preventing the owner from abusing the exclusive right granted by the trademark registration.
It is worth remembering that, following the entry into force of the new European Union Trademark Regulation 2015/2424, EUIPO no longer allows to file a waiver of protection over a particular element of the trademark. However, the Directive, which entered into force along with the Regulation, made no reference to this matter. Thus, the recently amended Law 17/2001 of December 7, 2001, on Trademarks, envisages the idea of disclaimer, although only applicable to terms with no distinctiveness, whether descriptive or generic. Therefore, we will have to wait and see which issues may arise in connection with this (almost) extinct figure.