Why Is Genericide a Problem for Trade Marks?
George Raptis
At its very core, trade marks are a form of intellectual property that must be capable of distinguishing a good or service from other goods or services in the market. If registered trade marks are no longer capable of doing so, the law cannot protect them. This article outlines how trade marks can lose their distinctiveness when the trade mark becomes generic. It also explains how to avoid genericide when considering a trade mark for your business’ brand.
What Is Genericide?
It is a dream for many business owners to have their unique product become the generic name for that product. A great example would be Johnson & Johnson’s product BAND-AID® which has become synonymous with adhesive strip products. However, consumers may begin to use a business’ brand to reference other products in the market generally. This can result in the brand losing its distinctive identity. Genericide is the term for this process.
Genericide is the process by which a brand loses its distinctive identity. This is because consumers use it to refer to any good or service of its kind.
Genericide can quickly become a problem for trade mark owners. This is because registered trade marks can only protect brands capable of distinguishing their goods or services.
How Can Trade Marks Become Generic?
There are several ways in which a registered trade mark can become generic. The first is when trade mark owners fail to properly police the market. Other businesses may begin to refer to their similar products by using the owner’s registered trade mark.
For example, the word ‘escalator’ became quickly used by other manufacturers of moving staircases. This resulted in the trade mark losing its protection in 1950.
Another way registered trade marks become generic is if the public begins to use them as a verb instead of a proper noun. For example, the word Google is often used as a verb when someone conducts an internet search, using the phrase ‘google it.’ Using registered trade marks as a verb can be harmful to the trade marks distinctiveness and lead to the trade mark becoming generic.
Common across all the examples of trade marks that have become generic are products that are the first of their kind. For example, innovative products like the escalator or adhesive strips have a higher chance of being genericised because they are new on the market and have yet to face competition with similar products.
Avoiding Genericide
In Australia, the legal test for determining whether a brand has become generic is industry-focused rather than consumer-focused. In the instance where somebody disputes the generic nature of your registered trade mark, the Courts will ask whether competitors in the same industry still understand that the term used refers to your specific company’s product rather than general products of its kind. For example, whether a brand like Thermos® has become the generic term used to describe vacuum flasks will be determined based on what other businesses in the food container industry view the term as referring to.
Since the test is industry-focused, trade mark owners in Australia are afforded greater protection than if the test was consumer-based. Nevertheless, trade mark owners can take the following steps to avoid their brand from becoming generic.
1. Use Your Trade Mark Properly
It goes without saying that you should be using your registered trade mark properly. This means that you use your trade mark as a proper noun to avoid using it as a general reference to a class of similar goods. Likewise, you should avoid using your trade mark as a verb, in its possessive form or plural form, as these generally lead to genericised descriptions of your goods or services.
2. Identify Your Trade Mark
You should also properly mark your trade mark. Under the Trade Marks Act, a registered trade mark should carry the reserved symbol ‘®’. On the other hand, unregistered trade marks can carry the ‘™’ symbol. By using these symbols alongside your trade mark, you are making others aware that trade mark law protects your branding and that others cannot use your trade mark without your permission.
3. Enforce Your Rights
Since trade mark owners have the intellectual property rights to use their registered trade mark, they can stop anyone who infringes on this right. In the instance where someone has misused your registered trade mark without your permission, you should first determine whether you have a strong case for proving trade mark infringement. It would be wise to seek legal advice to ensure that the person has likely infringed on your exclusive rights. Legal advice can help establish a course of action you will take to enforce your rights.
Generally, if someone has likely infringed on your exclusive rights, you can send the person a letter. This letter can demand that they cease their infringing conduct. If the person fails to act accordingly, you may likely seek legal action against the person.
Key Takeaways
Where a registered trade mark gains legal protection because it is capable of distinguishing a good or service, it can lose this protection if it becomes generic. Genericide is the process by which a brand loses its distinctive identity because consumers use it to refer to any good or service of its kind. You can avoid your trade mark becoming generic by properly referring to your brand when advertising your business, using the correct symbols to mark your trade mark and enforcing your exclusive rights in the instance where someone has misused your trade mark. If you have any concerns regarding your registered trade mark becoming generic, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The Trade Marks Act protects registered trade marks for 10 years from their filing date, and you can renew trade marks up to 12 months before their expiry.
Generally, you should apply for a trade mark earlier rather than later to ensure that you have protected your business brand from the outset of its operation.