An Overview on Trademark Genericide

Generic Trademarks: An Introduction

A trademark refers to a name, mark, or sign through which the products belonging to a company or a person can be distinguished from other products in the market. Primarily, trademarks perform four functions. Firstly, trademarks help distinguish one product from another in the market. Secondly, trademarks can be used as an indicative device that would help a person trace the origin of the product. Thirdly, trademarks signify the level of quality attached to a product or service. In other words, it signifies that products bearing a particular trademark possess the same quality level. Lastly, trademarks are pivotal for commercial purposes such as sales and advertisements. Moreover, trademarks also add to the brand value of a particular product or service. While trademarks are of utmost importance for products or services, in some cases, the excessive popularity of a particular product can lead to the creation of ‘generic trademarks’. Generic trademarks refer to a trademark or a brand name that has turned into a generic term or has become synonymous with a particular product or service solely due to its popularity. Some of the most prominent examples of generic trademarks include Band-Aid, Post-it, Jacuzzi, Jeep, Vaseline, Velcro, Tupperware, and Xerox. Typically, a generic trademark loses its secondary meaning. Trademark genericide refers to the process wherein a trademark loses its rights when the brand name or trademark begins to indicate a particular product rather than indicating the source or origin of the product.

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Trademark genericide and its contributive factors

Trademark genericide occurs due to a number of reasons. Most often than not, trademarks related to a product that is novel, unique, and relatively new in the market are likely to be genericized. This is primarily due to the fact that a new product and its trademarks do not have competitors. As a result, consumers may use the trademark itself to describe a particular product. This was noted in the case of Siegert v. Findlater (1878). Judge Fry JA elucidated that “A person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own because until somebody else produces the same article there is nothing to distinguish it from.” Thus, brands or companies that have a de facto monopoly in the market with respect to a particular product are likely to go through trademark genericide. Secondly, trademark genericide may occur if a proprietor does not give the product or service a unique, non-generic name. If a product or service is provided with a trademark that is a generic term or a term that defines the product itself (for instance, trademarking the name ‘Jeep’ for a jeep manufacturer), it would potentially lead to trademark genericization.

Cases related to trademark genericide

• V Ilango v. Rank Xerox Ltd

B.V Ilango v. Rank Xerox is a landmark judgment in the realm of trademark genericide. In the year 2012, the IPAB adjudicated that if a company takes elaborate measures to police the incorrect usage of their trademarks (which includes sending legal notices and cease and desist notices), the trademark in question will not be considered as a generic term. Moreover, companies or individuals who do not take precautionary measures to police the usage of their trademarks are solely responsible for the genericide of their respective trademarks.

• King-Seeley Thermos Co. v. Aladdin Industries

In the case of King Seeley Thermos v. Aladdin Industries, the appellant filed a lawsuit against Aladdin industries for the infringement of the word “Thermos” which is owned by the appellant. However, the defendant had the intention to sell their vacuum-insulated containers as “thermos bottles”. The defendant elucidated that the term “thermos” is a generic term. Moreover, it was contended by the defendant that the appellant’s trademark rights over the word “thermos” must be canceled. While the trial court first held that the appellant’s trademark registrations of the word “thermos” were valid, the word “thermos” had become a generic term used to define insulated containers. Subsequently, this decision was challenged by the appellant. Eventually, the Court held that the word “thermos” was indeed a generic term that was in the public domain, and thus, the defendant could proceed with the use of the word under the condition that “thermos” shall not be capitalized.

• Elliot v. Google

In Elliot v. Google, the plaintiffs David Elliot and Chris Gillespie acquired 763 domain names that were an amalgamation of the word “google” with another brand. Subsequently, Google Inc. filed a complaint and requested the transfer of the domain names to the Uniform Domain Name Dispute Resolution Policy which was inculcated in the domain name registrar’s terms of use. The plaintiffs contended that the GOOGLE mark was rather generic in nature and that he should be allowed to use the mark for business purposes. Eventually, the court held that there existed no evidence which implied that the word google was generic. Thus, the plaintiff was restricted from using the GOOGLE trademark in their business.

Methods to prevent trademark genericide

Firstly, trademark holders must attempt to actively police their trademarks once it is registered. This includes issuing cease and desist letters to organizations or competitors who may attempt to misuse the trademarks in order to refer to products and services that they manufacture or sell. When competitors misuse trademarks in order to represent or refer to a product or service that they represent, it can often result in trademark genericide. Secondly, it is important for proprietors to conduct a thorough dictionary search and select a trademark that is not a generic term. It is important to keep the trademark or the brand name as descriptive as possible in order to avoid genericide. Therefore, businesses or proprietors must avoid using generic descriptors for trademarks. Thirdly, businesses or individuals can follow their trademark with the name of the brand in order to help consumers correlate the brand name with the trademark belonging to the product or service. Thus, with proper measures in place, businesses can prevent the chances of trademark genericide to a great extent.

Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad), in case of any queries please contact/write back to IP And Legal Filings at  support@ipandlegalfilings.com.