Bandaid. Ugg. Google. Esky. Kleenex. Panadol. It’s the double-edged sword for businesses – brands should be promoted, the more popular it becomes, the better, but what happens when it becomes so popular it becomes a generalised, everyday term? What effect does this have on the business’s intellectual property rights? What does this mean for all other businesses?
In this article, we look at genericide and trade mark erosion.
What is Genericide?
Since it is the age of social media and technology, genericide is the inevitable name given to a business when it loses its trade mark due to generalised use of its brand name. Sections 24 and 87 of the Trade Marks Act 1995 (Cth) sets out the genericide laws in Australia.
Section 24 essentially states that if a registered trade mark contains a sign that becomes “generally accepted” within the trade as a description or name of the article, substance or service, then the registered owner:
- Has no exclusive rights to use the trade mark about goods and services of the same description;
- Ceases to have exclusive rights from the day the court decides the trade mark has generalised.
Quite simply, the business will lose its trade mark.
However, it is possible for a court to amend or cancel a previous order to remove a trade mark due to genericide. Section 87 provides that a court may:
- Rectify the cancellation or removal of a trade mark from the Register;
- Decide not to make an order removing exclusive rights of a registered trade mark owner.
The Australian test for genericide is industry-focused, that is, it looks at whether the mark is “generally accepted” within the relevant trade. This is opposed to other countries such as the US, which looks at acceptance by consumers instead. Although a fine distinction, it may be worth questioning whether a divide between industry/consumer is necessary, or if it is more beneficial that both views are taken into account.
How can a Business Protect its Brand from Genericide?
There are various ways a business can prevent its brand from hitting the generic point of no return. If you are concerned that your brand may be teetering on the brink of genericide, it may be possible to try the following strategies:
- Reclaim your brand: various brands have successfully managed to claim back its exclusive right by revamping their marketing campaign. Emphasising the brand in different fonts or style is a common way of doing so as well as adding the appropriate symbol (either TM or ®). More often than not, people are not aware that the word is a brand in itself.
- Use the mark as an adjective, not a noun: adding a descriptor after the brand name may be an effective way to remind consumers that the word is a brand, e.g. Kleenex added “tissues” and Lego added “blocks” to their products.
Sometimes these strategies will fail. Looking at the case of Australian Health & Nutrition Association Limited t/as Sanitarium Health Food Company v Irrewarra Estate Pty Ltd t/as Irrewarra Sourdough  FCA 592, Sanitarium’s case to remove the trade marked word “granola” from Irrewarra Sourdough’s products failed as the court held it was a generic term. Sanitarium products can be seen to have followed key marketing strategies to emphasise their branding with different fonts, style and the trade mark symbol, yet their case still failed. It is notable, however, that while Sanitarium lost their case their trade mark “granola” is still registered in Australia.
The ultimate lesson is that some consumers are simply unaware that some generic terms are trade marked brands, and that continual use of it may harm the business in removing its exclusive right to use it.
Impact on Businesses
Trade marks that have since been removed from the register due to genericide mean that it is free to be used in any other trade marks like a regular word or term. For example, the word “ugg” is a generic term in Australia referring to sheepskin lined boots. A search for the word “ugg” on the IP Australia trade mark search engine revealed 141 registered trade marks that include the word “ugg”.
Once a court has declared a trade mark as a generalised term under section 24, then other trade marks will be free to attempt to register their own marks containing the word. However, note that generic words are not always able to be trade marked in Australia if they are too common and unspecific.
For businesses who are concerned about their brands becoming victim to genericide, it is recommended to try and keep the trade mark as distinguishable as a brand as possible and to avoid using it as a noun from the beginning. Other businesses should always do a trade mark search before registering their own mark to ensure any potential generic trade mark has actually been removed.