Genericide: Could you be at risk of losing your trade mark?

April 1st, 2022
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Most of us use words such as Escalator, Flip Phone, Laundromat, and Sellotape as part of our daily vocabulary. What may come as a bit of a shock is that these words were once trade marks that belonged to, and were owned by, specific companies that had exclusive use over them and were used to identify only their products and services. Evidently, as time went on, they lost their distinguishing characteristics and found their way into our daily language. Today, most of us use Laundromat to refer to a laundry washing service and Escalator to refer to the automated stairs we use when we are not using elevators. These trade marks are termed generic trade marks.

What is a trade mark?

A trade mark is a mark used or proposed to be used by a person in relation to specific goods and/or services to differentiate those goods and/or services from similar ones in trade. Frequently, we understand trade marks to be the logos, words, or pictures that we identify a brand or services with, such as the tick for Nike or the half-bitten apple for Apple. South Africa’s Trade Marks Act 194 of 1993 (the Act) also requires that a trade mark is only registrable if it can differentiate the particular goods and/or services inherently (through being unique) or prior use (being used for a period of time before registration and being associated with the goods and/or services). When a trade mark does not achieve this, it is not distinctive, which also means it is not registrable as a trade mark in South Africa (SA).

Distinctiveness

Trade marks are considered source identifiers and this requires that they must be able to distinguish products/services in order to fulfil their purpose. This article discusses principles around words and marks that lose their uniqueness over time as they become popular and commonly used. These types of generic trade marks suffer from what is referred to as the ‘genericide doctrine’ (see SL Rierson ‘Toward a More Coherent Doctrine of Trademark Genericism and Functionality: Focusing on Fair Competition’ (2017) 27 Fordham Intellectual Property, Media and Entertainment Law Journal 691; and Andre van der Merwe ‘How and when does a trade mark become generic?’ (www.kisch-ip.com, accessed 7-3-2022)). In SA, the following scale is used to consider trade mark distinctiveness:

  • Fanciful/coined trade marks: Trade marks that are completely invented and have no specific reference from anywhere. The fact that they are invented makes them the most protected trade marks. Examples include Xerox, which is an invented word.
  • Arbitrary trade marks: Trade marks that may appear in the dictionary, but for different goods and/or services than their meaning may suggest. Examples include Apple for computers or Virgin for gyms and the airline industry.
  • Suggestive trade marks: Trade marks that hint at the product and/or service that they relate to. Examples include PlayStation to suggest a ‘station’ where you can play.
  • Descriptive trade marks: Trade marks that are descriptive of the goods and/or services offered. American Airlines is a good example that describes an American company in the airline industry.
  • Generic trade marks: Trade marks that are, or become, commonly used terms or words in daily language. As they become commonly used, they lose their distinguishing function. Usually, these trade marks end up being words used to refer to the whole group of goods and/or services, such as an Escalator.
The genericide doctrine

Genericide doctrine is a concept that refers to trade marks that are unprotectable and invalid (Rierson (op cit)) because, over time, they lose their distinctive and unique purpose. The types of trade marks that are typically at issue are word marks that no longer refer to their original product and/or service of interest. Most often, these marks relate to a general group of products and/or services in a trade or used as a noun/verb in daily language.

On the one hand, one could say the doctrine helps by avoiding situations where only one company may use and register a mark which is considered generic. In this way, the most popular words and names are available to be used by any company to allow fair competition. In the Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2) SA 771 (SCA) the court held that the terms Liquorice Allsorts were generic and descriptive terms in trade that could not be reserved for only one company to use. In essence, more companies compete better because they can use these famously identifiable words for publicising and advertising on any platforms.

On the other hand, as stated in King-Seeley Thermos Co v Aladdin Industries Inc 321 F.2d 577 (2d Cir. 1963) the genericide doctrine is ‘harsh … for it places a penalty on the manufacturer who has made skilful use of advertising and has popularized his product’. A once small company that may have spent hysterically on marketing may have to forfeit its trade mark to the public domain because it has become popular to the extent of being generic. For example, the owners of the trade mark Trampoline can now never enjoy the benefits of being the only ones using the trade mark Trampoline.

One may say that the advantage of this risk, however, is that it encourages owners to supervise the way their trade marks are used and to be careful when promoting their goods/services. Owners of trade marks must lead the use of their trade marks in order avoid them turning into generic marks. To achieve this, several companies publish guidelines on how the media, businesses, and the public should use their trade marks.

Words such as Escalator were once only allowed to be used by a specific company to advertise and publicise their ‘automated moving stairs’. Now, however, the public uses the word Escalator to refer to any ‘automated moving stairs’ that we see everywhere, despite being manufactured by other companies. In rare, but possible, cases, not having alternative words to refer to products and/or services of a certain nature may lead to such generic status of marks. The dominant word/s used may eventually be tossed into the mix of ordinary daily words to refer to all similar products, just as was the case with Aspirin. As there were no other available terms to relate to similar products as Aspirin, the term became the widely used term to refer to all products of the same nature.

Courts consider multiple factors before deciding on the question of generic trade marks, such as use by the owner of the trade mark, use by the media, use by the competitors, dictionary definitions, and evidence of consumer use (P Goliath ‘Everyday words can be the death of a trade mark’ 2015 (Jan/Feb) DR 39). In her article, Judge Patricia Goliath argues that trade mark owners usually make some mistakes when popularising their trade marks. By using their own trade marks recklessly in efforts to be popular, owners may lead to use of their trade marks as nouns/verbs, whereby dictionaries also define the marks without referring to their owners (Goliath (op cit)). Once a trade mark is used as a verb or noun by the public, it may indicate the start of generic use.

How to prevent generic trade marks

Most companies adopt strict guidelines over the usage of their trade marks, colour scheme, font use etcetera. In addition to policing, Judge Goliath (op cit) lists several more ways to protect your trade mark:

  • Select a unique, non-generic trade mark for the goods/services.
  • Use the product’s name next to the trade mark. For example, Apple computers or Google search engine.
  • Companies should not use their trade marks as verbs or nouns and should supervise that their marks do not get used ‘in any way that suggests a common, descriptive or generic meaning’.
  • The owner and the public should refrain from using the trade mark in ‘plural or possessive form’. For example, ‘kids play with Lego bricks’, not ‘kids play with Legos’.
  • Owners must capitalise, or put in bold, ‘the first letter of the mark, or put the whole trade mark in capital letters’, such as with KODAK or HP. This helps with the product standing out when being advertised or when within text.
  • Owners may use the trade mark notice next to the trade mark, such as TM/tm or R/reg when it is registered.
  • Owners should avoid use of abbreviations or variations of the trade mark, even for humorous or collaborative purposes.
Conclusion

Companies have a responsibility in how they use their trade marks because the public follows their example in most instances. Paying attention to this will assist companies to avoid losing their trade marks to the public domain and have advantage in court in case the trade mark still becomes generic. It is important that when one experiences trouble with their trade marks, they consult an attorney.

Siyabonga Skosana LLB (Rhodes) is a Legal Analyst at IHS Towers South Africa.

This article was first published in De Rebus in 2022 (April) DR 7.

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