A trademark can be referred to as a recognizable sign, word or symbol that can be used to denote and distinguish a specific product or service from others. It can be a word, logo, sound, color or slogan that helps associate a product or service to the company that is manufacturing or providing the said product or service. That being said, a trademark, as a source of identification, must be sufficiently distinctive so as to create an impact and become popular among the consumers and this distinctiveness can be either inherent or acquired by use of the trademark over time. It is however ironic that it is these popular trademarks that tend to become generic and lose their distinctiveness when the public starts associating the trademark to a particular product or class of products, rather than the source/manufacturer of the product.
Why don’t we Google some examples? The mark ‘Google’ has become so popular and common that it is used to denote the act of running an online search on any search engine. A US court ruled in favour of Google in the case of Elliot v. Google Inc., where it held that using a mark as a verb does not necessarily render the mark generic as long as the mark continues to perform its statutory function—that of distinguishing a product or service from those of others and to indicate the product’s or service’s source. The court pointed out that, even if a mark is used as a verb exclusively in the indiscriminate sense, the mark has still not become generic if a majority of the consuming public continues to use the mark to distinguish the product or service of choice from those offered by competitors. However, there is still a certain amount of risk a mark faces of becoming generic and thereby losing protection, if its proprietors do not take adequate measure to protect the same.
When a trademark is used to a point where the consumers begin to associate it to a particular product rather than its source, then the trademark is said to have become genericized or undergone Trademark Genericide, wherein it becomes the common descriptive name of a certain product and the trademark owner no longer has the exclusive right over the use of the said trademark. Some examples of popular trademarks that have become genericized over time are ‘Cellophane’ tape, ‘Escalator’, ‘Thermos’, and ‘Aspirin’ among so many others.
One of the main reasons behind Trademark Genericide, as observed earlier, is the continuous use of a trademark by the public to the point where it is used to denote a particular product rather than the source of the said product. It is indeed a matter of conflict for proprietors for having to choose between wanting to popularize their product and at the same time not lose their distinctiveness by means of synonymous use with the product. This risk is even higher when the product is first of its kind wherein without any competing trademarks for similar products, the trademark eventually becomes synonymous for the name of the product. A classic example for this is the genericization of the trademark ‘Escalator’ which was used by Otis Elevator Company. This term is now so common that it is defined by the Merriam-Webster dictionary as “a moving set of stairs that carries people up or down from one level of a building to another”.
Another reason for genericization of trademark is when a product is easier to be identified with reference to the trademark rather than the actual name of the product. For example, the trademark ‘Dumpster’ is easier to refer to the product ‘mobile garbage bins’ and the same goes with the trademark ‘Velcro’ which is used synonymously with the product, i.e., ‘hoop-and-loop fasteners’.
Once a trademark becomes a common noun for a specific category of goods or services, the competitors may feel free to use it in relation to their goods or services and as a consequence, the mark loses protection and the proprietor of the said mark has no legal claim over it.
To prevent a trademark from becoming genericized, the owners of the mark must be extremely vigilant and take active steps to protect their trademark. Some of these steps include:
- Using the generic name of the product along with the trademark. For example, ‘Q-Tip’ for cotton swabs.
- Using the trademark as an adjective and not as a noun or a verb. For example, referring to the trademark ‘Google’ as “Run a search on Google” rather than saying “Google it.”
- Giving proper notice of a registered trademark to consumers by using either the letter R enclosed within a circle – ® or using ‘TM’ for an unregistered mark.
- Raising objections to the misuse of one’s trademark by way of sending cease and desist notices, initiating action for passing off or infringement, etc.
- Misuse often occurs as a result of lack of education rather than wrongful intent. In such a case, proprietors can take appropriate measures to educate the public to ensure proper usage of the mark. The proprietors of the trademark “Velcro” released a video named “Don’t Say Velcro” on YouTube in the year 2017, wherein they had expressed their concern with the usage of their registered trademark as a noun or a verb and educated the consumers about its right usage. This came out as a real surprise to the public, as most of them were unaware that “Velcro” was in fact the name of their brand and not that of the product that they were dealing with.
- Other measures include using the word ‘brand’ after the trademark, using a distinctive typeface or style for the trademark or merely capitalizing the first letter of the trademark so as to ensure that it is not used as a verb, etc.
Major multinationals such as Google Inc., Xerox Holdings Corporation, Adobe Inc. etc. are actively trying to protect their trademarks from getting genericized.
Xerox Holdings Corporation came up with an advertisement campaign to educate the consumers regarding the rights of the proprietor over the trademark and the correct usage of the trademark with slogans such as “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.” and “When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache”.
In 2012 while deciding B.V Ilango Himachalapathy v. Rank Xerox Ltd & Ors., the IPAB held that if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as a generic term. All ad campaigns, emphasis on guidelines of use of trademark, oppositions initiated by proprietors of famous trademarks etc. shall be treated as evidence in case the trademark is being scrutinized for genericide. It is also pertinent to note that a trademark does not become genericized by default. It can be said so only when the courts declare the same.
In 2012, the Language Council of Sweden had to remove the word ‘ogooglebar’ which translated to ‘ungoogleable’ from its list of new words following a call for action from Google Inc. who requested that the new word be deferred as it contained their trademark and the same should not be used to refer to other search engines.
Another popular example of trademark policing is the case of Adobe Inc. wherein a set of guidelines have been laid down on their website with regards to the reference of their trademark and also condemns the usage of the trademark ‘Photoshop’ as a verb.
In conclusion, there are two sides to the coin of popularity of trademarks. As important as it is to popularize a trademark to the extent that it becomes a household name in the minds of the consumers, it is also important to take adequate measures to protect the rights of the proprietor by ensuring that the said trademark does not succumb to genericide.
This article has been authored by Sukanya Balasubramanian
