Genericide: Death of a Trademark

INTRODUCTION

In order to be registrable, the trademark should be capable of being represented graphically and be capable of distinguishing the goods and services of one person from that of another. Sections 9 and 11 of the Trademarks Act (“the Act”), provide that in order to attain registration, the mark should be distinctive in nature. Such distinctiveness could, however, be acquired by such trademark over the period of time by gaining recognition in public. In the course of gaining recognition and popularity amongst its customers, registered trademarks also fall prey to common usage and journey into the public domain. The consequence of such popularity is losing out on distinctiveness. The trademark owner thus, loses all his rights over the trademark.

If consumers understand the trademark to be the name of the product itself, as opposed to identifying its exclusive source, that trademark loses its distinctiveness. The common or the popular usage of the term leads to association of the particular product with that particular trademark or brand that its source. The trademark becomes the “common descriptive name” of a certain product, and the trademark owner will no longer have an exclusive right of its use.

A trademark’s popularity digs the grave for that trademark itself. A generic mark means a term which is the common descriptive name of class of goods or services. The Merriam-Webster dictionary defines ‘Escalator’ as “a moving set of stairs that carries people up or down from one level of a building to another.” The term Escalator was however formerly a trademark of the Otis Elevator company before it became a victim to its own success and died a generic death. Similarly, Dalda, Xerox and Aspirin, which was originally a brand name has now been diluted to bear reference to the product itself.

Causes of Genericide

A trademark suffers due to genericide simply because of its continuous usage by the public. The more popular the product, the chances of it dying a generic death increase. Some of the popular trademarked names that have now become generic because of the wrongful and continuous use by the public are Cellophane, Zipper, Kleenex, Thermos, Popsicle, Dry Ice etc.

A trademark can become generic due to several reasons. First, the product was of first of its kind and thus enjoyed monopolistic status in the market. Therefore, the public associated the trademark with the good rather than the source of the good. Another reason for trademark genericide can also be the lack of a suitable substitute term for the good. One such example would be of ‘Escalator. ‘Escalator’ is a catchy and fanciful term which is easier to use in conversations than moving staircase which was manufactured by the Otis Elevator Company. Another reason for trademark genericide can be the paradoxical behaviour of companies regarding their own trademark. Companies want their products to become well known but they definitely do not want the public to use the trademark to denote the product rather than the source of the product. Unskilful advertising and inadequate control measures are the reasons why a trademark becomes a generic term.

The Legal Outlook and Possible Solutions

Famous companies like Google, Rayban, and Xerox are now battling the war of genericide of their marks and are fighting towards saving them. In 2012, the Intellectual Property Appellate Board (“IPAB”), while deciding B.V Ilango vs. Rank Xerox Ltd.held that if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as a generic term. The statement of the IPAB – “perhaps the respondent has acted just in time to save its mark losing its life….” shows that Xerox is indeed in a precarious position and must act pro-actively so as to prevent its trademark from dying a generic death.

Google, one of the world’s most prestigious and well- known trademarks, launched Uniform Domain Name Dispute Resolution Policy (UNDRP) proceedings after a third party filed several domain names which combined the word Google with another word. The Plaintiff, David Elliot, purchased over 700 domain names with the word “Google” in them. After Google successfully won a domain name dispute, Elliot filed to cancel Google’s trademarks. In supporting his claim, Elliot contended that the GOOGLE mark had become generic because the public frequently uses the wording “Google” as a verb. The court, ruled in favour of Google however, clarifying that using a mark as a verb does not necessarily render the mark generic as long as the mark continues to perform its statutory function—that of distinguishing a product or service from those of others and to indicate the product’s or service’s source. The court pointed out that, even if a mark is used as a verb exclusively in the indiscriminate sense, the mark has still not become generic if a majority of the consuming public continues to use the mark to distinguish the product or service of choice from those offered by competitors. The district court dismissed the claims and the Ninth Circuit affirmed the dismissal. In order to prevent such further indiscriminate usage, Google has published “rules for proper usage” of all its trademarks, partly to help stem the use of “Google” as a verb.

In order to avoid the genericide, the owners of the trademark should:

  1. Avoid using the trademark as a verb or a noun which implies that the word is generic.
  2. In addition to the distinctive term, the trademark owners should use a generic term along with the distinctive name, which is easily recognizable. This would let the consumers remember and retain the invented part of the mark and also associate it with the source of the product. For e.g. Apple Computers, Xerox Photocopiers etc.
  3. Trademark owners should be extremely vigilant and must keep a check on improper use of their mark. The owners should resort to enforcement mechanisms and prevent any form of illegal or unauthorized usage of their trademarks.
  4. Trademark owners must establish guidelines for the usage of their trademarks and ensure that they are followed strictly. Companies should implement a strong trademark regimen which may help them in prevention of their trademark becoming generic.
  5. The brand owners can run advertisement campaigns in order to prevent misuse of their trademarks, this would also lead to publicity of their brands, as well as educate the consumers at large about the vigilance of the brand owner. For instance, in 2003 Xerox ran an extensive ad campaign to educate the public about the correct usage of the word ‘XEROX’. The advert ran as, “When you use ‘XEROX’ the way you use ‘Aspirin’, we get a headache.”

In order to prevent their trademarks from becoming generic, the companies or the brand owners should remain on their toes and take swift actions against it. For e.g. Adobe has a whole page dedicated to trademark guidelines. The guidelines very clearly state that the public should not use the term ‘Photoshop’ as a noun or a verb. It is however an uphill task to control how the public uses a trademark owned by the other person or company. However, if a trademark is hugely popular in its field, it may not be feasible to monitor its public usage. The enforcement of correct usage of the term may prove very difficult.