In Short
- Brand names can become generic if overused, risking loss of trade mark protection.
- Google avoided losing its trade mark due to public association with its search engine.
- Prevent genericide by enforcing trade mark rights, using marks properly, and educating the public.
Tips for Businesses
To avoid brand genericide, always use the ® symbol with your
trade mark and promote it alongside a noun (e.g., "Buy a
Kleenex tissue"). Monitor usage and take action against
infringements early. Educate the public on proper use of your trade
mark to maintain its distinctiveness and protect your brand's
value.
It is not uncommon for trade marks to become familiar, descriptive words. For instance, consider tissues and the brand Kleenex. Indeed, it may seem ideal to market your brand so successfully that your trade mark becomes a common word. However, this can create problems regarding trade mark protection. For example, in 2017, the search engine giant, Google, faced the removal of its trade mark due to genericide. In this article, we explore this case further and provide some tips on avoiding brand genericide.
Brand Genericide in Australia
One of the essential elements for a trade mark is that it must be capable of functioning as a badge of origin in the marketplace. Therefore, courts can remove the trade mark from the Trade Mark Register even after approval. This is because the trade mark has become so common that it no longer describes the brand; instead, the trade marks refers generally to the actual goods or services themselves.
In Australia, the Trade Marks Act imposes an industry-focused test to determine whether a trade mark has become 'generic'.
The Trade Marks Act states that the registered owner will lose their exclusive rights if a registered trade mark becomes generally accepted within the relevant trade as a 'descriptive sign'.
For example, consumers today widely use the term 'cryptocurrency' in a generic and descriptive sense. As such, traders in the cryptocurrency space need to use the term in the general course of business. Therefore, if a financial services business registered the trade mark 'CRYPTOCURRENCY' back in 2010, the business would almost certainly lose its right to use that trade mark in present times exclusively. However, it is ultimately the court's decision to cancel or remove a trade mark from the register.
The test for brand genericide in Australia is significantly higher than in the US. In Australia, we appear more inclined to protect those who obtain a monopoly. For example, consider the brand THERMOS, which lost its trade mark registration to genericide in the US. However, THERMOS remains a registered trade mark in Australia.
Some Background to the Google Case
In 2012, Google objected to Chris Gillespie's use of the word 'Google' in their domains. Gillespie had registered 763 domain names, including the following:
- 'googledisney.com';
- 'googlebarackobama.net'; and
- and 'googlenewtvs.com'.
At the time, Google successfully argued that Gillespie's conduct constituted trade mark infringement in the US. Shortly after, Gillespie and David Elliot filed an action against Google, claiming the name had become a generic term to describe internet searching and, therefore, should not remain a registered trade mark.
The Ruling
The District Court of Arizona found that Gillespie and Elliot failed to present sufficient evidence that Google had become a generic term. Indeed, Gillespie and Elliot were also unsuccessful on appeal, as the judge stated; "the mere fact that the public sometimes uses a trade mark as the name for a unique product does not immediately render the mark generic".
To determine whether a trade mark is lost to genericide in the US, the courts consider whether the public views the trade mark as the product rather than the origin of the product. If the public still views the trade mark as the origin of the product, then the trade mark is still effective.
How to Prevent Brand Genericide
A fine line exists between trade success and trade dominance. For instance, if you own a successful business, there is a risk of consumers recognising your trade mark as a common term rather than recognising the term as a brand. Therefore, if you have registered a trade mark, consider the following tips:
- always use the ® symbol in connection with your trade mark. This will increase the chances of consumers recognising the sign as a brand rather than a generic term;
- use your mark in conjunction with a noun. For example, "Buy a Tupperware container" or "Buy a Kleenex tissue", as opposed to "Buy a Kleenex";
- never promote your trade mark descriptively. For example, Google does not encourage using the phrase "Google it";
- enforce your rights at an early stage. If you become aware of someone using your trade mark, take action immediately to stop the conduct; and
- educate and remind the public about the proper use of your trade mark.
Key Takeaways
Trade marks that become common household names can become lost to brand genericide. In 2017, Google avoided losing its exclusive rights because the public still associates Google with the iconic Google search engine. In Australia, we consider brand genericide from the industry's perspective. This means in many cases, brands are likely to retain trade mark protection. However, trade mark owners must still take practical steps to retain the uniqueness of their trade mark. The more well-known your brand, the better. Although, make sure you do not become a victim of your success!
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.
