What is a Genericised Trade Mark?
Emily Young
There is a very fine line between popularity and market dominance, with the latter often having negative consequences in the trade mark domain. Over time, a brand might become so famous that it becomes a household name. While seemingly good for business, this has led to companies losing their trade mark registration through trade mark genericisation.
This article will take you through what trade mark genericisation is and how to avoid it.
Generic Trade Marks
Generic trade marks refer to common terms used to describe goods or services. These trade marks are the weakest types of trade marks, as they are neither distinctive nor unique.
For example, a trade mark for a blanket called “blanket” would be considered generic and therefore not suitable for trade mark protection.
Generic Terms as Trade Marks
Broadly, generic terms cannot be registered as trade marks. This is because everyone has the right to describe the goods or services they are selling. Monopolising a common term would remove this right and reduce competition, which is unideal.
Aside from generic terms, there is another common occurrence where a good or service becomes synonymous with its brand name. Where a good or service has a monopoly in the market, the associated trade mark risks being subject to genericisation. Where this happens, the trade mark risks losing its legal protection, allowing competitor businesses to use the genericised term to describe their own goods or services.
Disadvantages of Genericised Trade Marks
The process of genericisation is a double-edged sword. On one hand, it indicates that your trade mark has substantial market dominance, to the extent that it has become a household name.
While this might seem like an opportunity for free advertising as consumers refer to your trade mark, and therefore positive for business, genericisation has a range of negative impacts. Firstly, your registered trade mark may lose its protected status, allowing all competitors to use the trade mark to promote their own products. Further, the brand name will also lose its distinctiveness, reducing its value and making it difficult to advertise effectively.
Examples of Genericised Trade Marks
There are a range of common goods and services that were once protected by trade mark registration that have since lost their protection due to becoming genericised. For example:
- ‘aspirin’ was once a trade mark name for a specific brand of acetylsalicylic acid;
- ‘escalator’ was once a trade mark of an elevator company;
- ‘trampoline’ was once a trade mark of a tumbling company; and
- ‘videotape’ was originally a trade mark owned by an audio and video tape recording manufacturer.
In more recent years, businesses have become cautious to avoid genericisation.
Avoiding ‘Genericide’
To avoid your trade mark becoming genericised (often referred to as ‘genericide’), the owner of a potentially genericised trade mark must take steps to prevent broad use of their trade mark. We outline some ways to avoid genericide below:
| Pair your name with a phrase | Pairing your product name with a descriptive term or a phrase can help avoid it becoming generic. For example, Kleenex has started including “Kleenex brand tissues” on their packaging to prevent the singular term “Kleenex” from becoming genericised. |
| Establish guidelines | Before registering your trade mark, you should consider developing guidelines for using it and ensure you stick with them. This might include avoiding using your trade mark as a verb and ensuring that a generic noun follows it. For example, saying “can of coke cola” rather than using “coke” as the noun itself. |
| Expand your business | Expanding your business beyond one type of goods or services might help avoid your trade mark becoming genericised. This way, your brand will be remembered as an entire entity rather than for one specific good or service. |
| Market carefully | You should ensure you market your trade mark carefully to avoid genericide. This includes discouraging misuse of the trade mark. For example, Google has emphasised the importance of avoiding using “Google” as a verb to prevent genericide. |
| Avoid infringement | Another key way to avoid genericide is to take swift action against any competitors that infringe your registered trade mark. If you can prevent competitors from infringing your trade mark as early as possible, you can reduce the risk that your trade mark becomes genericised. |
Key Takeaways
Generic trade marks refer to common terms used to describe goods or services. These trade marks are considered the weakest types and are therefore generally not eligible for trade mark registration. On the other hand, your trade mark might become so commonly known that it becomes genericised, at which point it risks losing its legal protection. Some key things you can do to avoid your trade mark becoming genericised include:
- pair your business name with a phrase;
- establish guidelines for trade mark use;
- expand your business;
- market carefully; and
- avoid allowing trade mark infringement to go unchallenged.
If you need assistance understanding genericised trade marks or need help with your trade marks more broadly, our experienced trade mark lawyers can help. You can get in touch with them by calling 1300 657 423.
Frequently Asked Questions
Where a good or service has a monopoly in the market, the brand name might become synonymous with the product itself. If this occurs to a trade mark, the process is referred to as genericisation. Where a trade mark has become genericised, it risks losing its legal protection, so competitor businesses can use the genericised term to describe their own goods or services.
Trade mark genericisation has a range of negative impacts. For example, your trade mark might lose its protected status, allowing all competitors to use the trade mark to promote their own products. Further, the brand name will also lose its distinctiveness, reducing its value and making it difficult to advertise effectively.