Judge Ruth Bader Ginsburg wrote the judgment in the recent case of United States Patent and Trademark Office v Booking.com that may in time be referred to as the "generic.com case". The US Patent and Trademark Office ("USPTO") had held that Booking.com was not a registrable trade mark for travel-related services. Not too surprisingly, it took the view that the word "booking" is totally descriptive of, and therefore unregistrable for travel-related services, and that the addition of the suffix".com" adds no distinctiveness at all. This decision was overruled by the courts and the issue finally ended up at the Supreme Court.
The Supreme Court found in favour of Booking.com. Here are some important findings from the judgment.
It's not quite as simple as saying that, because the word "booking" is totally descriptive of the product, adding a feature as non-distinctive as ".com" takes the matter no further.
This quote from Judge Ginsburg is interesting:
"Whether Booking.com is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if Booking.com were generic, we might expect consumers to understand Travelocity—another such service—to be a 'Booking.com.' We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveller to name her favourite 'Booking.com' provider."
You need to take into account the nature of the domain name system
Judge Ginsburg said this: "A 'generic.com' term might also convey to consumers a source-identifying characteristic: an association with a particular website." The reason? "Only one entity can occupy a particular Internet domain name at a time... a consumer who is familiar with that aspect of the domain-name system can infer that Booking.com refers to some specific entity."
The judge said that it is this exclusivity inherent in the domain name system that sets so-called "generic.com cases" apart from those where a generic word is followed by words like Inc or Company. So, for example, many companies could call themselves Wine Inc., or The Wine Company.
It is the perception of the consumer that is determinative.
The issue here, said the judge, was whether consumers saw "Booking.com'' as a generic term or a brand name. The survey evidence showed that consumers considered it a brand name. The following quote is key:
"The PTO also invokes the oft-repeated principle that "no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise it cannot deprive competing manufacturers of the product of the right to call an article by its name." ...While we reject the rule proffered by the PTO that "generic.com" terms are generic names, we do not embrace a rule automatically classifying such terms as non-generic. Whether any given "generic.com" term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.''
The argument that allowing registration of such a descriptive mark would hinder competition has no merit.
Judge Ginsburg said that the concept of "classic fair use" will protect any good faith or descriptive use:
"A competitor's use does not infringe a mark unless it is likely to confuse consumers... In assessing the likelihood of confusion, courts consider the mark's distinctiveness...When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark's owner...Similarly, 'in a 'crowded' field of lookalike marks' (e.g., hotel names including the word 'grand'), consumers 'may have learned to carefully pick out' one mark from another."
So, how might this have played out in South Africa? South African trade mark law tends to follow British and European law more closely than US law, but there are still many similarities. South African trade mark law certainly recognises the concept of fair use. Having considered the South African protection in place for the BOOKING.COM trade mark, we note that the mark registered in class 43 for hotel reservation services between 2013 and 2015. The 2015 registrations are in a stylised device format and exclusive rights to the ".com" element has been disclaimed. While the 2013 registration is merely ordinary capital letters, no disclaimer has been entered against this registration. Interestingly, there is no protection in South Africa for the BOOKING.COM trade mark in class 39 for travel agency services. The South African Registry has become quite strict in its approach on the registrability of trade marks since these BOOKING.COM registrations. If these applications were filed more recently, we suspect that it may have been challenging, although not impossible, to obtain registration of the BOOKING.COM trade mark.
Originally published 04 August, 2020
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