/widgets.js";var sz=d.getElementsByTagName(s)[0];sz.parentNode.insertBefore(z,sz)}(document,"script","zb-embed-code"));

TRADEMARK – Funeral For A Brand – How It Becomes Generic

Do you know that ‘Escalator’ was a trademark once upon a time? Not many can recall or are even aware that it was a trademark that was owned by Otis Elevator Company. But in 1950, the owner lost its case and lost its proprietary right to own ‘Escalator’ as a trade mark because it was recognised by the general public as the common description for a moving staircase. And that is an example of ‘genericide’.

The process of which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time when a mark is not used as a trademark (i.e. when it is not used to exclusively identify the products or services of a particular business); when a mark was neglected; when a mark was used and promoted in the wrong manner; or when the trademark owner does not enforce its rights through actions for passing off or infringement under Intellectual Property Rights.

A trademark is said to be generic when it began as distinctive but has changed in meaning to become generic. It typically becomes genericide when the products or services with which they are associated with have acquired substantial market dominance such that the primary meaning of the generic trademark becomes the product or service itself rather than an indication of source for the product or service; to an extent that the public thinks the trademark is the generic name of the product or service.

Trademarks often become generic through the manufacturer’s own advertising and labelling mistakes. Example of brands that have turned generic, amongst others, are Cellophane (in place of transparent cellulose sheets), Thermos (in place of vacuum-insulated bottles), Nylon (in place of synthetic fabric made from petroleum products), Trampoline (in place of rebound tumbler) Petrol (in place of refined petroleum spirit and many more.

Therefore, the owner should be aware of the Do’s & Don’ts in safeguarding your trademark to prevent them from becoming generic:

DO EXAMPLE DON’T EXAMPLE
Display the trademark with capital letters; or use inverted commas to depict the mark.          spritzer
jimmy-choo
Use your trade mark as a verb. (insert the INCORRECT sign X ) “Please xerox the documents for me.”(insert the CORRECT sign / )“Please make copies of this report using the ‘Xerox’ copier.”
Identify the trademark as a trademark by using a generic term following the mark.  kleenex Use your trade mark as a noun. ( X ) “Wipe your hands with Kleenex.”( / ) “Wipe your hands with Kleenex tissue paper.”
Trademarks that end with an ‘s’ may be used with singular or plural nouns. Do not remove the‘s’ to singularize these marks.  levis Use the mark in the possessive form unless the trademark itself is possessive. ( X) Post-it’s quality is unmatched.”( / ) “The quality of ‘Post-it’ adhesive notes is unmatched.”
Insert the symbol ® or TM after the trademark for identification.  celcom
colgate
Advertise the trademark as a product itself. ( X ) “Try the best tasting Jack Daniel’s today!”( / ) “Try the best tasting Jack Daniel’s whiskeytoday!”

The above explanations and examples are given in hope that the owner of a trademark will understand and take appropriate steps in avoiding any usage of mark or promoting the mark which may turn it into a generic mark and lead to loss of rights.

Therefore reasonable steps should be taken to educate and coach the management teams as well as everyone in the organization in respect to how they should manage their brand including brand marketing before it jeopardize its status quo.

 

*This article is a summary of the ‘Well Known marks Vs Generic Marks’ article by Alex Neoh (Trademark Manager at Intellect), that was featured in LiBra – Living with Brands (Volume 2) magazine.



Be secure and rest assured with us
Protect and defend your intellectual property with our great services