Tissue vs Kleenex? Container or Tupperware? A plaster or a Band-Aid?

These are examples of trade marks that have become common, descriptive terms. Who doesn’t want to become the next Kleenex? A brand, so well marketed and successful that it has become a common word. However, this may not be so good. For a brand name to function as a trade mark, it must be distinguishable from other brands. Even after a trade mark has been granted, the trade mark can be removed from the Trade Mark Register if it becomes so common that it no longer describes a brand, but rather the actual goods or services themselves. So do you really want to become the next Kleenex?

Earlier this year, Google dodged the death of genericide, or trade mark erosion. This article will explore the case and explain how to avoid falling victim to brand genericide.

Background of the Case

Back in 2012, Google filed an objection to Chris Gillespie’s use of Google in their domains. Gillespie had registered 763 domain names, which included the word “google”, such as “googledisney.com” and “googlebarackobama.net”. At the time, Google successfully argued that Gillespie’s conduct constituted trade mark infringement in the US.

In comes, Genericide.

Earlier this year, Gillespie and David Elliot filed an action against Google on the grounds that the name has become a generic term to describe internet searching and therefore should not be protected as a trade mark.

The Ruling in Favour of the Search Giant

The District Court of Arizona found that Gillespie and Elliot failed to present sufficient evidence that Google has become a generic term. This was upheld when Gillespie and Elliot appealed the District Court’s decision and the judge stated that “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”.

In determining whether a trade mark has succumbed to genericide, the US test asks 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, the trade mark is still effective.

Brand Genericide in Australia

Unlike the US consumer-focused test, the Australian test is industry-focused. Section 24 of the Trade Marks Act states that if a registered trade mark becomes accepted within the relevant trade as a descriptive sign, the registered owner will lose their exclusive rights. However, it is at the court’s discretion to cancel or remove the 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.

How to Prevent the Next Brand Genericide

A fine line stands between trade success and trade dominance. As the line weighs further on the side of dominance, there is a risk of becoming recognised as a common term, rather than the brand. If you have registered a trade mark, follow these tips:

  1. Always use the ™ or R symbol in connection with your trade mark. This ensures that everyone knows that it is a brand rather than a generic term.
  2. Use your mark in conjunction with a noun. For example, “Buy a Tupperware container” or “Buy a Band-Aid plaster”, not just “Buy a Band-Aid”.
  3. Never promote using your trade mark in a descriptive way. For example, Google does not encourage the phrase, “Google it”.
  4. Enforce your rights at an early stage. If you become aware of someone using your trade mark, take action straight away to stop the conduct.
  5. Educate and remind the public about the proper use of your trade mark. In 2003, a Xerox advert stated: “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache”.

Key Takeaways

Trade marks that become common, household names cease to be distinguishable in the market — a fate known as genericide. Google avoided this fate because the public still views Google as the origin of the Google search engine. In Australia, we consider brand genericide from the perspective of industry, not the public, meaning brands are more 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, but make sure you don’t become a victim of your success! If you need help protecting your trade mark, call LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Alexandra Shaw
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