Tips To Avoid Registering a Generic Trade Mark
A product name like Johnson & Johnson’s BAND-AID® has become widely used by consumers as a generic description for all types of adhesive bandages. Whilst it is a great achievement of any business whose brand name becomes synonymous with their product, this can cause many issues for a business’ registered trade mark. When registering a trade mark, genericide might not be at the forefront of your mind. Therefore, this article provides some tips on how to avoid having your trade mark being generic.
What is Genericide?
Genericide occurs when consumers begin to use a brand name to refer to a widely produced product in the market. Terms like Band-Aid and Sellotape are good examples of brand names that customers use as common terms to refer to all types of adhesive bandages and sticky-tapes, respectively.
Since a trade mark must be capable of distinguishing a business’ goods and services from others offered in the market, genericide presents some obvious problems. Ultimately, a brand name risks losing its distinctive identities when consumers commonly use the name to refer to any good or service of its kind.
There are many ways in which a registered trade mark can become a generic term. You can find a summary of these in the table below.
|Where a trade mark owner fails to police the market and prevent their trade mark from being misused.||This will include instances where another business begins to refer to their products using your brand name. The more other brands use your trade mark as a common term for a particular product, the more likely it will become a generic description of that product.|
|Where customers begin to use your trade mark as a verb instead of a proper noun.||For example, the trade mark ‘Google’ is often used as a verb for when someone wants to conduct an internet search (‘just google it’).|
|The product is the first of its kind, meaning it is more likely to become generic.||Innovative products like an escalator or adhesive bandages are at a higher chance of falling victim to genericide because, with little competition in their market, the innovative product can quickly become synonymous with its brand name.|
Can You Avoid Genericide?
When registering a trade mark, genericide might not be at the forefront of your mind, especially if your product has not gained much traction in the market. However, as seen in the examples in the table above, consumers can begin using your trade mark as a generic term. Here are three tips to avoid genericide.
1. Enforce Your Rights
In the instance where another business has used your trade mark to market their products, you have the legal right to prevent them from misusing your brand name. As mentioned above, your trade mark is at a greater risk of becoming generic as more people use your trade mark as a generic description of a particular product. Since you have the exclusive rights to use, licence and sell your trade mark, you should enforce your rights where a brand has used your trade mark without your permission.
Generally, if someone has misused your trade mark, you can send them a letter demanding that they cease their infringing conduct. If they fail to act per your demand, you can seek legal action. In both instances, you should consult a trade mark lawyer who can advise you on whether trade mark infringement has been made out and what steps you should take to prevent them from further committing the infringing conduct.
2. Use Your Trade Mark Correctly
This may seem like an obvious thing, but even big companies fall into the trap of grammatically misusing their trademark. In your marketing materials, you should only use your trade mark as a proper noun. This can help you avoid it being used as a generic term to refer to your products. For example, Johnson & Johnson would likely market their adhesive bandage products as ‘Buy a Band-Aid plaster’ and not ‘Buy a Band-Aid.’
You should also avoid using your trade mark as a verb as this can also lead to a genericised description of your goods. To use the same example as above, an advertisement produced by Johnson & Johnson would likely avoid the phrase ‘just Band-Aid it’.
3. Use The Registered Trade Mark Symbol
Another way you can avoid your registered trade mark from becoming generic is by using the reserved symbol ‘®’. You must use the symbol alongside your trade mark as this notifies the public that trade mark law protects your brand and other businesses cannot use your mark without your permission.
Whilst genericide might not be an issue at the forefront of your mind when registering a trade mark, it can quickly become an issue once you begin using your trade mark to market your business’ goods and services. To avoid your trade mark becoming a generic term, you should:
- enforce your rights if your trade mark has been misused;
- use your trade mark as a proper noun in marketing materials; and
- brandish the reserved symbol to notify the public that a registered trademark protects your brand.
Frequently Asked Questions
Under Australian trade mark law, trade mark protection lasts for 10 years from the filing date of the registered trade mark.
Since trade marks must be capable of distinguishing your goods and services from others in the market, IP Australia is unlikely to accept an application for a generic trademark.