Generic trade marks – recent developments in the UK and Europe
While we have previously written about the problem of trade marks becoming generic, there has recently been a development in the United Kingdom (originating from the European Union) regarding generic trade marks, that appears to be worthy of further comment and discussion.
It should be remembered that, in South Africa’s law, a trade mark is a purely territorial concept and trade marks (and their validity) have to be considered on a country-by-country basis. This means that if a trade mark has been found by a competent authority or court in one country to be invalid or generic (for example by a court in the USA), that finding will not automatically apply in another country. A further independent finding in another country or countries will have to be made regarding the validity of that trade mark i.e. whether or not that trade mark is, or has become, generic in such other country or countries.
Recent amendment of the United Kingdom Trade Marks Act
Certain amendments to the UK Trade Marks Act 1994 and their Trade Mark Rules 2008 came into effect on 14 January 2019. These changes implement the EU Trade Mark Directive 2015 in the UK. In other words, these changes have been made and are now effective in all EU countries.
More particularly, in the UK, a provision has been introduced which allows for a court action to be brought by a trade mark owner where in a dictionary, or similar publication, a publisher refuses to amend reference to a registered trade mark as a generic term, and where such reference is incorrect.
In other words, if a publisher of a dictionary incorrectly identifies a trade mark as being a generic term in a dictionary or other similar publication, the trade mark proprietor will be able to ask the publisher to make it clear that the entry in their publication relates to a registered trade mark (and that the entry is not merely a descriptive term).
If the publisher refuses, or does not do so promptly, or in the case of a printed publication, does not undertake to correct the entry in the next edition of the publication, the trade mark owner may apply to the UK High Court for suitable relief to be taken against the publisher. The Court is empowered to order the publisher to correct any entry or amend the way the trade mark is reproduced in their publication, or even to destroy those editions of the publication. The court has further discretionary remedies available to it, and that it may order in favour of the trade mark proprietor.
Accordingly, it will be understood that this amendment, which also applies to such incorrect references made prior to 14 January 2019, has provided trade mark proprietors with various new powers and remedies to assist in preventing their respective trade marks from becoming generic and thereby unenforceable.
In the author’s view, although the broadening or strengthening of trade mark proprietors’ rights is generally to be welcomed, this amendment appears to be somewhat unusual. Firstly, there have been very few trade marks - simply a handful, it is submitted - over the last century or so that have become generic and secondly even fewer of such (generally well-known) trade marks have been published, whether correctly or incorrectly, in dictionaries or similar publications. So, is this kind of statutory provision for such rare situations really needed or necessary? The legal authorities of the EU (and now by implication also the Parliament of the UK by virtue of its EU membership) are apparently convinced of the need or necessity for dealing with such situations in their legislation.
From a general perspective, and in the event of such publication in a dictionary or similar publication, what is the overall impact and implication for a trade mark proprietor? The up-side for the proprietor may, initially at least, be an increase in reputation for the relevant trade mark and its proprietor – and the majority of readers of the relevant publication would not generally be aware of the legal implications for the proprietor. However, the down-side for the proprietor in the longer term would be the legal implication that the trade mark was being used or shown in a descriptive and damaging manner. Hence this would be a double-edged sword for the proprietor – apparently having both favourable but ultimately unfavourable consequences.
The EU is of course a very large community of countries and traders involved in the second or third largest economy in the world. So, possibly that size and its involvement on the world of trade (and its trade marks) warrant such legal provisions although it appears that such provisions would not often be required in practice.