Member Article

A highly unusual thing about Google, which according to Brand Finance has now become the world’s most valuable brand (USD109.4-billion), is that it is seemingly able to defy the rule that if your trade mark becomes a verb, you’ve pretty much lost the trade mark because it’s become generic. The technical term here is “genericide”, and words like thermos, aspirin, escalator and linoleum are often cited as examples of trade marks that became generic words, whereas trade marks like Hoover, Xerox, Kleenex and Jacuzzi are often cited as trade marks that need to be careful of suffering a similar fate.

In 2014, we discussed Elliott v Google Inc, the case where Google managed to fight off an attack on its US trade mark registration. The case was based on the claim that, as the word “google” is commonly used to describe the act of searching on the internet (using any search engine), the word has become generic, and therefore no longer functions as a trade mark. The US court, however, ruled that even though “google” has become an accepted word for the act of searching on the internet, the name Google still designates a particular search engine. The judge said this:

“It is contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark – cultivated by diligent marketing, enforcement and quality control – has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs. As one scholar has stated, ‘top-of-mind use of a trademark in its verb form, far from indicating the mark’s generic status, may well indicate the enduring fame of the brand.’”

Despite the fact that the party who brought the case against Google didn’t put up much of a fight, it did appeal the judgment. The Court of Appeals for the Ninth District delivered its judgment recently. It upheld the first court’s decision. It said that “verb use does not necessarily constitute generic use.” It further said that “if the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from, then the mark is still valid.”

The appeal court elaborated on this by saying that the claim that the trade mark is generic “must relate to a particular type of good … even if we assume that the public uses the verb ‘google’ in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines.”

The distinction therefore seems to be this: whereas in the case of words like aspirin or escalator, the (former) brand name has become the generic name for the product (the tablet and the moving staircase), this is not what’s happened here, because “google” has not become the generic name for search engines, but rather the generic name for the act of searching. Hoover and Xerox may possibly be similar to Google in the sense that they tend to be used as verbs for vacuuming or copying rather than generic words for vacuum cleaners or copiers.

Does this mean that we can tear up the rule book? Can trade mark owners allow their trade marks to be used as verbs, can they even use them as verbs themselves? We think not! For starters, this issue hasn’t gone as far it could, the US Supreme Court hasn’t ruled on the issue. Trade mark matters do find their way to the US Supreme Court from time to time and that court has, in fact, just handed down a judgment on the issue of offensive trade marks (The Slants case). Furthermore, courts in other countries may well decide differently.

Besides, there are some suggestions in the judgment that it may all turn on the facts. The court made these comments: “We do not hold that generic verb use is categorically irrelevant … the way we use words as verbs is often related to how we use those words as adjectives or nouns, such that evidence of indiscriminate verb use could potentially be relevant in deciding whether a trademark has become the generic name for a type of good or service.”

We strongly suggest that trade mark owners assume that the old rules still apply; namely, use your trade mark as an adjective, don’t use it as a verb, seek to stop any third-party verb usage, don’t add an apostrophe to the trade mark and use the trade mark in a distinctive manner. If in doubt, seek advice on good trade mark usage.

Gaelyn Scott

trade mark attorney director head of IP department [email protected] cell: +27 83 632 1445