What is "Trademark Genericide" and how to avoid it
A trademark is granted under the Trademarks Act, 1999 to those distinctive marks which represented graphically, are capable of distinguishing the goods and services of one person from that of another. However, in certain cases, this distinctiveness becomes a generic mark, where instead of indicating the particular brand or source, the mark becomes a colloquial representation of the entire product category. This deterioration of trademark and distinctiveness is known as ‘Trademark Genericide’.
Trademark genericide occurs when the public starts associating a mark with the products of not only the registered manufacturer but also those of its rivals. This is a piece of classic evidence underpinning the fact that there is a thin line between a well-known mark and a mark that has become generic. And more often than not, if the manufacturer fails to undertake measures and employment of strategies, there is a huge threat of the well-known mark falling prey to its genericide.
Some of the significant examples of genericide in the past are, ‘Escalator’, ‘Zipper’, ‘Cellophane’, ‘Yo-Yo’, ‘Gramophone’, ‘Aspirin’, ‘Thermos’. How many of these did you know were actually trademarks and not the names of the category of the product?
The use of the term ‘Genericide’ can be traced back to the US trademark case involving Monopoly, the famous board game. On 7th March 1983, the ‘Legal Times’ magazine had published an article titled ‘‘Court Rules that ‘Monopoly’ Has Suffered Genericide”. In that case, the court had ruled that the term ‘Monopoly’ had become so popular that it was difficult to distinguish it from the particular manufacturer and the rest, leading to the loss of the rights of the manufacturer to initiate legal action against the imitative games that used the name ‘Monopoly’.
Indian Law Dealing with Genericide
The Section 36 of the Trademarks Act, 1999 clearly states that the mark becomes liable for cancellation in cases where a particular mark comes to be known as a representation of the product category and not the source from where the product has come. Further, the sections 9 and 11 of the Act clearly state that in order to be eligible for registration, the mark should be sufficiently distinctive in nature, and terms that are generic in nature are not eligible for registration. The terms which are generic in nature are not entitled to protection under Trademarks as such words used by all and are available in the public domain.
The ‘Public Perception’ Test
In order to determine whether a trademark has become generic, the U.S. court in Bayer Co. Inc. v. United Drug Co. had laid down the ‘Public Perception Test’. According to the test, the question of fact to be answered in such situations is that ‘What do buyers understand by the word for the use of which the parties are contending?’. If for the public, the word signifies the nature or class of an article rather than the origin or source from where it has come, the mark has fallen prey to genericide.
The word ‘Aisprin’ had become a descriptive and generic term for the public, referring to all the drugs of the same composition and not to the product manufactured by the company Bayer AG.
The word Yo-Yo had become a generic name for the particular kind of toy and not that of the toys produced by the company Duncan, causing the term to fall into the prey of genericide.
Similarly, ‘Escalator’, the former trademark of the Otis Elevator Company has become a generic description of a moving set of stairs.
Who is to Blame?
There is no single entity on which the blame for genericide can be fixed. The blame for the deterioration of the trademark rights associated with a particular mark can be placed upon the owners of the trademark as well as the public.
The excessive advertisement and marketing undertaken by the trademark owners tend to do more harm than good, contrary to what is believed by them. Through advertisements, the manufacturers often encourage the users to use their trademarks as generic household words, which in due course of time comes to be identified as the representation of the product rather than the source. This is exactly what happened with well-known products such as ‘thermos’ and ‘cellophane’.
Another mistake committed by the trademark owners is when the resort to licensing their marks without giving due consideration to factors such as quality control measures in the licensing agreement which in the long run leads to dilution of the mark and detaches the mark from the original manufacturer.
The public contributes to the genericide of the mark in many ways. Nowadays, people are prone to bend and modify the words towards fashionable and more convenient ways. Social networking and internet language have led to the people caring less about brand protection. As a result, we tend to use trademarked words in verbalised and pluralised manner, like using the word ‘Xerox’ in place of ‘Photocopying’. In such cases, it naturally follows that the identity of the mark will get merged with the product itself.
In cases of such patents that involve trademarks as well, it becomes even easier for the trademark to become genericised. This generally happens in the cases where the only manufacturer of the product until the term of the patent is the owner themselves. The mistake that such owners make is using the same name as the trademark as the identity of the product. This leads to the consumer associating the product only with the name as used by the producer and by the time the term of the patent ends, the trademark becomes the identity of the product and unless educated otherwise the consumers continue the association of the product with the trademark, leading to genericization.
Measures to Avoid Trademark Genericide
It is important to employ effective and efficient strategies and measure to not only prevent genericide of the trademark but also to market the product in a way that it makes an impact on the consumers. Some of the measures that can be taken are,
When launching a new and innovative product, introduce not only a brand name but along with it, a generic name of the product as well, in order to properly separate the brand name from the identity of the competing products. This will be useful also in cases of genericism associated with patents. Potential genericide can be averted to a great extend by simply using a product description that is separate from the trademark.
Under the Indian statutory laws, a grace period of two years after the expiry of the patent is allowed before striking down the trademark. If after two years, the name of the product and the trademark have become inseparable, the trademark is liable to be struck down. This two-year window becomes crucial for the manufacturers to employ effective strategies to create a trademark separate from the generic name of the article.
The trademark should be used as an adjective rather than a verb or a noun. Promoting the use of the trademark as a noun or a verb causes an impression that the word is generic, and lead to degeneration of the trademark. A great way to figure this out is by removing the trademarked word from the sentence, if the sentence continues to make sense, then the usage is a proper one.
Another mistake is using the trademark in a pluralised manner. This also causes a great potential for the trademark to fall into the trap of genericide.
Being persistently vigilant towards generic use of the trademark and ‘trademark policing’ is also an effective strategy employed by various reputed manufacturers. This requires staunch vigilance and quick action in cases when misuse is revealed. Xerox, for example, has employed this technique by undertaking excessive campaigning, like running advertisements in the newspapers by reminding the public to "photocopy" documents instead of "Xeroxing" them, and to produce "photocopies" instead of "Xeroxes”, along with it, using slogans like, ‘If you use Xerox the way you use Zipper, our Trademark could be left wide open’ and ‘If you use Xerox the way you use Aspirin, we get a headache’. Coca-Cola aggressively defends its trademarks by employing people to visit retail establishments which do not serve Coca-Cola products and specifically order Coca-Cola or a Coke. A sample of such product is taken and sent for testing, and if such beverage is not a Coca-Cola product, notice to stop such deceptive practices is served to the establishment, and in cases where the practices continue even after the notice, suit of trademark infringement is filed.
Trademark genericide is a harmful phenomenon with a great potential to cause losses in terms of money as well as goodwill to the manufacturers. Popularity and attainment of a well-known trademark is something that is desired by every brand manufacturer, however, there is a great price to pay for it, if strategies and measures are not employed effectively and within the right time. Efforts are required to be made by the manufacturers to constantly keep at their toes and stay vigilant towards any misuse or potential threat to the trademark. Measures taken in time will go a long way in avoiding the harmful impacts of genericide.
Anand, M., & Sampat, P. (n.d.). Using “generic” terms in your brand name? Retrieved from Game Changer Law Advisors: https://gamechangerlaw.com/using-generic-terms-in-your-brand-name/
Gerben, J. (n.d.). Court: ‘GOOGLE’ Not A Generic Trademark. Lessons Trademark Owners Should Learn About Genericide. Retrieved from Gerben: https://www.gerbenlaw.com/blog/court-google-not-a-generic-trademark-lessons-trademark-owners-should-learn-about-genericide/
Ingram, J. D. (2004). The Genericide of Trademarks. Buffalo Intellectual Property Law Journal, 154-163.