Knowledge

Trade Marks

What is genericide, and how to prevent it

Max Steinhausen

What is more ironic than a trade mark losing its protection due to its own success? The legal term for this phenomenon is ‘Genericide’, it is a form of abandonment e.g. “when a mark becomes the generic name for the goods or services on or in connection with which it is used.”

Badge of origin

One of the key requirements for a trade mark to be successfully registered is that the mark is distinctive for the goods and services it intends to protect. It can, therefore, serve as a ‘badge of origin’, so it identifies an exclusive source of goods and services sold. A simple example is that you can’t trade mark ‘Apple’ for fruits and related goods, as the term “Apple” solely describes the goods, rather than an exclusive source of the goods. However, it works just fine if you trade computer hardware and software under that name, as the relevant public would never associate term as a description of hardware and software.

Genericide

If over time, a trade mark becomes so commonly used by the general public that it is associated with the goods and services sold, it loses its distinctiveness and in turn becomes descriptive.

Section 24 of the Australian Trade Marks Act 1995 (Cth) states that if a registered Trade Mark becomes generally accepted within the relevant trade, as the sign that describes or is the name of an article, substance or service, the owner has no more exclusive rights over the trade mark.

Any corporations dream to turn its products into a household name can quickly turn into a corporate nightmare, from which many well-known companies and brands never woke up.

Take the example of the ‘Yo-Yo’; Duncan Toys Co went bankrupt after a judge ruled that “yo-yo” had become too ingrained in common speech to remain trade marked (Duncan Toys Co v Royal Tops Co, 1965).

Many other companies followed this course, such as Kleenex, Band-Aid, Jacuzzi, Thermos, Aspirin, Escalator and Hoover to name a few.

Velcro’s battle with Genericide

What do you call that “scratchy hairy fastener” again? “Hey, that’s Velcro”. Well, that response is exactly what the lawyers of the Velcro company try to prevent throughout a humourous video that has gone viral, in which they educate people about the origin of the brand, “Don’t Say Velcro”

They sing “When you use ‘velcro’ as a noun or a verb e.g., velcro shoes, you diminish the importance of our brand and our lawyers lose their *insert fastening sound.* So please, do not say ‘velcro shoes’ – we repeat ‘velcro’ is not a noun or a verb. VELCRO® is our brand.”

It is arguable if this attempt to educate the general public will be successful. Some commentary says that it may be too late and that the brand can’t be saved in the long run, as ‘velcro’ has already become a description of the product it once protected.

However, the message conveyed by the lawyers is broad and aims at informing the public of the importance of trade mark laws. Education through humour, is one of the many strategies that companies employ in order to protect their brand.

In an advert by Xerox the company stated: “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache”, 2003 Xerox advert, Xerox Corporation.

In May 2017, the U.S Court of Appeal had to answer to the question whether ‘Google’ had become a generic word to say ‘searching on the internet’. The Court ruled that Google is still distinctive because it does not exclusively signify this. It is to note that Google company had published ‘rules for proper usage’ of its trade mark, to mitigate the risk of genericide.

Strategies to prevent Genericide

The World Intellectual Property Organisation (WIPO) warns, “Questions of trade mark dilution have gained new prominence with the rise of e-commerce and the emergence of new market intermediaries [like eBay and Amazon]”.

Strategies to mitigate the risk of Genericide

  • Protect your trade mark against competitors that have started using your trade mark to advertise products similar to yours.
  • Keep an eye on potential misuse of your trade mark by the media.
  • Educate the public with marketing campaigns about the proper use of your trade mark e.g. the mark represents the brand, not the product.
  • Always use the trade mark in the proper form, stylisation, and with the appropriate trademark symbol (® or ™).
  • Only use the trade mark in a non-descriptive way.
  • Never use the Trade mark as a verb, a noun, in a possessive or plural form.
  • Use the trade mark in a line of products rather than a single product.

The more successful your brand, the better, but do not let it become a victim of its own success.

Our team can help with your IP protective strategies, get in touch with us for a free consultation.

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