India: Trademark Genericide: Victims Of Their Own Success?

Introduction

The Trademarks Act 1999 provides for registration of trademarks- a mark capable of being represented graphically and distinguishing the goods and services of one person from that of another. Sections 9 and 11 of the Act make it amply clear that in order to be registered a mark should be sufficiently distinctive in nature. However registered trademarks also fall prey to common usage and journey into the public domain. Consequently, the trademark owner loses all his rights over the trademark.

Trademark Genericide can be defined as the loss of trademark rights when a term enters common usage and consumers begin to denote a particular product than its source. When a trademark becomes the "common descriptive name" of a certain product, the trademark owner will no longer have an exclusive right to its use.

Justice O'Connor while deciding whether the term Park'N Fly when used with respect to long term airport parking services was a generic term held that "A trademark or service mark that becomes generic is no longer entitled to protection."9

Every year the term Trademark Genericide claims more trademarks into their early graves. A mark is said to be generic if it is the common descriptive name of a class of goods or services. For instance, 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. Same in the case of Dettol, Dalda, and Heroin where

what was originally a brand name has now been diluted to bear reference to the product itself.

Reasons behind Trademark Genericide

The reason behind Trademark Genericide is simple. The trademark becomes genericized due to the continuous use by the public who use the term to denote a particular product rather than its source. 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 – Aspirin, Cellophane, Zipper, Kleenex, Thermos, Popsicle etc.

In Coca-Cola Co v. Overland Inc.10the Court emphasised that "An originally non-generic, valid trademark becomes generic and invalid when the principal significance of the word to the public becomes the indication of the nature or class of an article, rather than the indication of the article's origin" .Genericide of trademarks is now a major concern for companies who fear that their trademarks may become victims to their own successes. Once a trademark becomes generic, the company loses all proprietary rights over it and it journeys into the public domain. There are a lot of possibilities as to why a trademark becomes generic in nature. The first possibility being that the product was first of a kind and enjoyed monopolistic status in the market and therefore the public associated the trademark with the good rather than the source of the good.11 The term "genericide" is sometimes used to describe the process where the trademark owner actually participates, often unknowingly, in the destruction of the distinctiveness of the trademark. Another reason for trademark genericide can also be the lack of a suitable substitute term for the good, case in point being the

term 'Escalator'. 'Escalator' is catchy and fanciful and much easier to say than a moving staircase 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 trademarks like Kleenex, Trampoline etc are now generic terms.

Legal standpoint

Famous trademarks like Google, Yahoo and Xerox now stand at the pearly gates of trademark genericide. In 2012, the 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 the 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...."12 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.

The Google trademark ranks as one of the most valuable trademarks in the world. People have now started using the term Google as a verb often referring to search something as 'Google it'. Google is so conscious of the problem that it has published "rules for proper usage" of all its trademarks, partly to help stem the use of "Google" as a verb. In 2012, Google filed a Uniform Domain Name Dispute Resolution Policy (UDRP) Complaint following the registration by a third party of several hundred domain names which combined the word Google' with another word element.13 The Administrative panel ruled in favour of Google and ordered that the registrant transfer all the domain names to Google.14 The Registrant, Mr David Elliot then filed a suit in the US district court in Arizona seeking cancellation of the trademark registration of Google saying that the term Google had become generic. In supporting his claim, Elliot contended that the GOOGLE mark had become generic because the public frequently uses the wording "Google" as a verb.15 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.16

Steps that can be taken to avoid Trademark Genericide

  1. Trademark owners should avoid using the trademark as a verb or a noun which implies that the word is generic.
  2. Trademark owners should give a new product an easily recognized generic name in addition to the fancy trademark name.
  3. Trademark owners should be extremely vigilant and must keep a check on improper use of their mark.
  4. Trademark owners can add the word "brand" after the trademark on the product packaging.
  5. Trademark owners must establish guidelines for the usage of their trademarks and make sure that they are followed strictly. Companies should implement a strong trademark regimen which may help them in prevention of their trademark becoming generic.

Conclusion

Companies should take active steps to prevent their trademarks from becoming generic. 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. Instead of choosing a name that is very fancy, companies should ensure that the usage of the term is correct and in accordance to their trademark guidelines. However what still remains to be seen is, whether a company can really control how the public uses its trademark? If a trademark is hugely popular like Xerox for photocopying or Escalator which is a pioneer in its field, can public usage of the term actually be monitored? The enforcement of correct usage of the term is very difficult. 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."

Companies should therefore use the generic name of the product along with the trademark. For e.g. Apple Computers, Xerox Photocopiers etc. They should avoid all variations and make sure that the trademark stands out from the surrounding text.0Google and Xerox may have managed to keep their trademark status for now but it still remains to be seen how long they can keep their competitors at bay from declaring their trademark to be generic.

Public perception and understanding is the key for determining whether a registered trademark has lost its source-denoting value and become generic. While evaluating public perception, a broad set of factors should be considered including availability of alternative terms, the trademark owner's use and promotion of the mark etc.

Footnotes

9 Park'N Fly, Inc.v. Dollar park and Fly,Inc. 469 U.S 189(1985)

10 692 F.2d 1250

11Harshavardhan Ganesan, The Other Mass killing: TM genericide available at  https://spicyip.com/2016/05/the-other-mass-killing-tm-genericide.html

12 Mr.B.V.Ilango vs M/s Rank Xerox Limited IPAB order no. 229/2012 on 21/09/2012

13US trademarks: Google defeats Genericness claim available at http://www.managingip.com/Article/3396065/US-trade-marks-Google-defeats-genericness-claim.html

14Elliot vs Google Inc., order available at  https://law.wm.edu/faculty/inthenews/pdfdocuments/Elliot%20v.%20Google.pdf

15Elliot v. Google Inc., No. CV-12-1072, 2014 WL 4447764 (D. Ariz. Sept. 10, 2014) in the United States district Court for the District of Arizona.

16Irene Callboli, Elliot vs. Google Inc. available at  https://ttlfnews.wordpress.com/2014/10/17/elliot-v-google-inc-no-cv-12-1072-phx-smm-2014-u-s-dist-lexis-127352-d-ariz-sept-10-2014/#_ftn5  park and Fly,Inc. 469 U.S 189(1985)

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