Member Article

Stories of trade marks becoming generic - which may have the result that trade mark registrations become vulnerable to cancellation - are rare. Yet there have been a number of examples recently. In March 2014, there was a decision of the Court of Justice of the European Union (CJEU) that dealt with a claim that a trade mark registration for Kornspitz should be cancelled because the word had become generic. The trade mark registration covered bakery products, and the contention was that ‘kornspitz’ had become the generic name for a particular type of oblong-shaped bread roll in Austria.  

The law in question speaks of a trade mark becoming the ‘common name’ for the product, and it also refers to ‘inactivity’ on the part of the trade mark owner. The particular question that the CJEU had to consider was whether the fact that the word had become generic amongst end users was sufficient, when it apparently still functioned as a trade mark - in other words designated origin - in the trade.  The court’s opinion was that it is the perception of the public that matters, not that of the trade. This means that if a trade mark has become generic with the general public then it’s generic, even if those in the industry still see it as a trade mark.  The court also felt that if the trade mark owner does not take steps to inform the public that it is a trade mark, this could amount to inactivity.

Not long ago we wrote a piece on Twitter’s IPO.  In it we looked at the issue of whether any of Twitter’s trade marks - which obviously form major assets of the company – are at risk. The article concentrated on the trade mark Tweet, which the company in its documentation itself admitted ‘could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet... if this happens, we could lose protection of this trade mark.’

A journalist recently asked our firm to comment on the fact that a South African fast food chain, Chicken Licken, was using trade mark registrations for Soul Food to stop other businesses in the food industry using similar names. This raised a number of issues, including ones relating to the validity of the trade mark registrations. Was Soul Food a distinctive trade mark in South Africa when it was registered back in 2001? If so, has it become generic? The term ‘soul food’ does, of course, have a rather loose meaning of homemade or family food – food from the soul.

There are lots of examples of trade marks that have become generic - cellophane, escalator, kerosene, nylon, linoleum, zip, windsurfer and gramophone to name a few. In some cases it may be a trade mark in one country and a generic word in another - thermos is apparently generic in the USA but not in the UK, yo-yo is apparently generic in the USA but not in Canada, and aspirin is apparently generic in the USA but still a registered trade mark in a number of countries.  There are also certain trade marks that might be regarded as being under threat of becoming generic. The title of this article - Sort out the Kreepy Krauly, get the Weber going, and let’s chill in the Jacuzzi – is not simply what the average South African male says to his female companion on a Sunday, it’s also a good  example of three trade marks that are often used generically in South Africa.    

So how do trade marks become generic? And which trade marks are most at risk?

Trade marks for ground-breaking products - by which I mean products that have never been seen before - are particularly vulnerable. ‘Oven chips’ is often cited as the classic example of a term that started life as a trade mark (belonging to McCain, the company that came up with this bit of genius), but was soon the generic term for a product that became very popular.  If you think this punishes innovators, bear in mind that there’s nothing stopping the trade mark owner from creating a generic name for the product. Who knew, for example, that there is a generic name for Rollerblades - inline skates?

Market leaders are also vulnerable. Take Google, for example. It’s the absolute market leader in the area of Internet searching, and many people do use the word generically. They may say, for example, ‘I’ll check on Google’, when they may simply mean ‘I'll check online’. They may even use it as a verb, saying ‘I’ll Google it’, when they simply mean ‘I’ll search it’.

Failing to monitor what others are doing with your trade mark is dangerous. If you see others using your trade mark wrongly - the press, dictionaries perhaps - stop them.   It’s been reported that words like Google and Twitter have made it into certain dictionaries and, although this may not be fatal (many dictionaries will now have a disclaimer to the effect that the mere fact that a word appears in it doesn’t means that it isn’t proprietary), it certainly doesn’t make life any easier for the brand holder. Ask British Airways how difficult things became when Club - the name of its business class - started appearing in dictionaries as the name of a class of airline travel.  Obviously if you see competitors using your trade mark for their own products, you need to take steps to enforce your registrations.

If you are really worried about what might be happening to your trade mark, consider taking steps to educate the public. Companies like Xerox and Rolls Royce have placed ads in the media, informing people that their trade marks are just that, and not words which should be used to describe the action of making photocopies, or something that’s prestigious or luxurious.

It’s also important to make sure you use your own trade mark correctly.  Don't use it in the plural form, and don’t use it as a verb or noun.  Rather, trade marks should be used as adjectives.  And if you’re worried about it becoming generic, be pedantic. Use the name of the product or product descriptor after the trade mark, and possibly even insert the word ‘brand' between the two.  Band-Aid bandages.  Kleenex brand tissues.

Finally, whatever you do, don’t help your trade mark become generic. This was the approach that SAA seemed to adopt some years back in connection with its Voyager loyalty trade mark.  A company spokesman once made this extraordinary announcement:  ‘You know a branding campaign has worked when it becomes the generic term for something. Thousands of South Africans refer to loyalty air miles as “Voyager Miles” which is actually SAA's award scheme.’   Yes, your marketing may indeed have worked, but you may also have lost your trade mark!

 

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