A brand that becomes so popular that everyone uses it as a generic name for a product or service sounds like a dream, but can actually be a major problem for the trademark owner. For example, when consumers and competitors use ‘Luxaflex’ as a generic term for horizontal blinds, or ‘Aspirin’ to refer to a painkiller, the trade mark may lose its distinctive character and, with it, its legal protection. This is known as genericisation.
In this blog, we discuss when this occurs, how it is assessed and what you, as a trademark owner, can do to prevent your trademark from becoming a generic term.
When does a trade mark lapse?
Pursuant to Article 2.27(1)(a) of the Benelux Trade Mark Act (for Benelux trade marks) and Article 58(1)(b) of the the UMVo (for EU trade marks), the right to a trade mark may be declared to have lapsed if, through the acts or omissions of the trade mark proprietor, the trade mark has become a common name in trade for the goods or services for which it is registered. This does not happen automatically: in principle, a trade mark remains valid until it is declared to have lapsed following a claim or request by an interested party.
For this to happen, two conditions must be met.
- Firstly, the trade mark must have become a common name among the relevant public for the goods or services for which it is registered. The relevant public then no longer uses the trade mark to indicate the origin of a product or service, but as a generic name for that product or service.
- Secondly, this development must be the result of acts or omissions on the part of the trade mark proprietor.
How is it assessed whether a trade mark has become a generic term?
The assessment focuses on how the relevant public perceives the trade mark. It is examined whether the name is still seen as a reference to the goods or services of a single specific undertaking, or whether it has become the common name for an entire category of goods or services.
The perception of consumers or end-users is usually decisive. Depending on the characteristics of the market, the perception of professionals, such as sales staff and other intermediaries, may also be relevant, particularly where they influence the purchasing decision. It may be sufficient for the trade mark to have become a generic term amongst consumers or end-users alone.
The fact that a trade mark is widely used, is the best-known name for a product or is included in a dictionary is not, in itself, sufficient. The decisive factor is whether the trade mark has lost its function as an indication of origin. The absence of a commonly used alternative name may be an indication of this, but it is not in itself a condition for revocation.
It must then be established that the trademark’s descent into a generic term is the result of acts or omissions on the part of the trademark proprietor. The trademark proprietor may, for example, facilitate this development by using the trademark itself as a generic product name. Omission may be deemed to have occurred if the proprietor fails to take sufficient steps to ensure that licensees, distributors and sellers continue to use the name as a trade mark, or fails to take sufficient action against the use of the trade mark as a generic term by others. Without this link between the trademark owner’s conduct and the genericisation, the trademark right cannot lapse on this ground.
When assessing the trademark owner’s conduct, consideration may be given, amongst other things, to their advertising, guidelines for use, licence terms and action taken against generic use by market participants.
How to protect your trademark
To prevent your trade mark from becoming a generic term, it is important to use it consistently as a trade mark. Where possible, also state the generic name of the product or service. If you are launching a new product, it is preferable to introduce a generic term yourself. For example, for the product launched under the Solex brand, the trademark owner introduced the generic term ‘moped’. Also make it clear to employees, licencees, distributors and resellers how they should use the brand, and set this out in usage guidelines and agreements where necessary.
In addition, monitor how the trade mark is used in the marketplace, in the media and online, and take action against parties who present the trade mark as a generic term. If your trade mark is included in a dictionary as a generic term, you can request the publisher to state that it is a registered trade mark. You do not need to take action against every instance of use, but your efforts must be proportionate to the nature and extent of the generic use. You should also keep records of your usage guidelines, communications and enforcement activities. This will enable you to demonstrate that you have actively sought to maintain your trade mark’s distinctive character.
The fact that a trade mark enters general language usage does not therefore automatically mean that the trade mark proprietor loses their rights. However, a trade mark that is used generically on a large scale may lose some of its scope of protection, even if it does not lapse. By consistently using the trade mark as a trade mark, providing clear guidelines for use and actively taking action against generic use, the risk of it becoming a generic term can be significantly reduced.
Would you like more information?
Do you have any questions about protecting your trade mark against becoming a generic term? Please feel free to contact Maurits.
