If a trademark becomes so common that consumers start using the original brand name as a generic term, you might see it as a compliment. However, from a legal perspective, this type of trademark dilution can undermine your rights to that brand name, as Olga van Leeuwen explains.
The dilution of a registered trademark into a generic term most often occurs for new products or services for which no standard industry term exists – or for which one clear market leader has emerged. For that reason, many marketers welcome the use of their brand name as a verb, since it reflects a high level of market adoption. From the perspective of a trademark consultant, however, the dilution of a trademark into a generic term is far less attractive.
The emergence of the Google search engine offers just one high-profile example of a genericised trademark. These days, we don't search the net, we 'google' it. Other examples include aspirin, cellophane, escalator, linoleum, thermos, trampoline and videotape.
How to avoid trademark dilution
How can you prevent your own brand from losing its distinctive function and becoming a generic term for the product or service?
- Register trademarks
After creating your brand name, you should start protecting it by registering it as a trademark for the goods and/or services for which you are going to use it. In this way, you acquire an exclusive right to the trademark, and you can invoke the trademark law of the countries where you have registered the trademark to enforce that right.
- Understand the risks
In some jurisdictions, the trademark owner has the obligation to guard against their trademark becoming a generic term. For example, article 2.27(1)(a) of the Benelux Convention on Intellectual Property (BCIP) stipulates that:
"A trademark may be revoked if, after the date on which it was registered, it has become, as a result of acts or inactivity of the proprietor of the trademark, the common name in the trade for a product or service for which it is registered."
In other words, a right can be revoked for trademark dilution if that sign becomes a genericised trademark. No brand owner or trademark consultant wants to see that happen to their rights.
- Use trademarks in the 'correct' way
To prevent your marks from being challenged on the grounds of trademark dilution, you will first have to ensure that you, as the trademark owner, use the trademark in the 'correct' way, i.e., as a sign to distinguish your goods or services from those of other parties.
As any trademark consultant will tell you, it's crucial to ensure that the generic term for the product or service is always mentioned next to your brand name. For example, when everyone started using 'google' as a generic term, it would have helped to prevent it from becoming a genericised trademark by consistently stating that it was the "search engine GOOGLE".
- Enforce your exclusivity to that trademark
If, despite all your efforts, your consumers are inclined to use your trademark as a generic term for the product or service, it is important to take action.
Taking regular action against trademark dilution can help you show that you are proactively enforcing how your trademark is used, which can help you prevent your brand name from being cancelled on the grounds that it is a genericised trademark.
Key takeaways about trademark dilution
Prevent your brand from losing its exclusivity and becoming synonymous with the product or service for which you use your brand with these helpful steps:
- Register your trademark for the goods and services you use it for and in the countries in which you use it.
- Use your trademark consistently as a trademark and name the product or service for which the trademark is intended separately.
- Enforce your trademark rights by regularly taking action against trademark dilution and infringement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
