How and when does a trade mark become generic?
WHAT IS A GENERIC TRADE MARK?
Most people have heard of a generic term or a generic medicine but what is a generic trade mark? Over the years certain trade marks such as ASPIRIN, ESCALATOR, CELLOPHANE, LAUNDROMAT, and THERMOS (namely the term thermos in the United States of America, as judicially determined in 1962, has become a generic term for vacuum-insulated bottles or flasks, although only when used in all lower-case letters) - have become generic marks. In other words, these marks, which were once distinctive and functioning trade marks, have over time become descriptive of the relevant goods or generally define a class of goods - and no longer serve to identify the goods of a particular manufacturer.
In order to understand what a generic trade mark is, and how certain marks become generic or fall into the public domain (-through a process known as “genericide”), one first has to understand what the basic functions of a trade mark are.
Historically, and in common law, a trade mark was considered and defined by the British Courts, and subsequently by our own courts, as a badge of origin – or as a source identifier - ie having the function of indicating the origin of the relevant goods or services. This means that the basic function of a trade mark was (and still is) to indicate the manufacturer or originator of the goods or services. As trade mark law developed, this basic function of a trade mark, in order to be registered, expanded to include the function of distinguishing the goods or services of one business from the same or similar goods or services of another business in the course of trade.
In terms of our Trade Marks Act, No 194 of 1993 (“the Act”), a trade mark is defined to mean a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.
In confirming this, Section 9 of the Act requires that a trade mark, in order to be registrable, must be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person. A mark can be considered to be capable of distinguishing in this manner either inherently or by reason of prior use. However, a mark that is not (or no longer) capable of distinguishing in this manner cannot serve the basic function of a trade mark, as above, and hence it cannot be registered as a trade mark, as provided in Section 10 of the Act.
Examples of such marks or words are those of a descriptive nature, laudatory words, words that are reasonably required for use in a particular trade, words that serves to designate geographical origin, or other characteristics of the goods or services. Such marks or words, which are not capable of distinguishing within the meaning of Section 9 of the Act, are either unregistrable or, if registered, are liable to be removed from the Register.
However, in this brief article we are mainly concerned with marks – such as word marks - which are initially capable of distinguishing and hence which qualify for registration – and then for some or other reason, or reasons, become incapable of distinguishing. Once a trade mark has lost this ability or function, it can no longer act as a trade mark. Accordingly, the Act provides in Section 10 that a trademark that is not capable of distinguishing, within the meaning of Section 9, is liable to be removed from the Register of Trademarks.
In an early British decided case (Ford v Foster, dating from 1872), the Court took the approach that the test must be whether a word that was originally a trade mark and that has become publici juris (-viz has fallen into the public domain), is calculated to deceive the public as to whether the relevant goods were made by the original owner or not. If the mark has become so public and in such universal use, that nobody can be deceived by the use of it into thinking that such goods are the goods of the trader then, however, hard it may appear to be on the trader, the right to the trade mark has been lost.
In other words, a trade mark owner must, at all costs, strive to prevent his/her valuable trade mark from genericide and hence from falling into the public domain. It should be mentioned, however, that until and unless the High Court or the Registrar formally finds that a trade mark has fallen into the public domain, it will be a matter for conjecture whether or not it has become a generic trade mark. For example the trademark LIQUORICE ALLSORTS was in 2000 found by the Supreme Court of Appeal in South Africa to have become a generic name for a particular liquorice confectionery. In contrast, other trade marks may appear to have become descriptive - but until there has been a formal finding in this regard, such trademarks will remain valid. So the process of genericide must be consciously avoided by trademark owners.
HOW TO PREVENT A WORD TRADE MARK FROM BECOMING GENERIC - AND THE PROPER USE OF TRADE MARKS
Another aspect of trade marks that must be understood in this regard, is the proper use of a trade mark. A trade mark in the form of a word-mark must ALWAYS be used as an adjective, and not as a noun or a verb, and not in a possessive/genitive form. Examples of this are: LUX soap – and not simply as LUX; or a BMW car – and not simply a BMW; or a GOOGLE search and not to “GOOGLE” a search – although marketing forces exert considerable pressure on brand owners to use trade marks as nouns – as illustrated earlier in this sentence – in order to shorten expressions.
In support of the above correct usage, most astute trade mark owners adopt a strict protocol or profile for the correct usage of their trade marks, for example, a particular font, a particular corporate colour or colours(s) – using the correct Pantone colour code(s), always positioning their trade mark in a particular position on their packaging, and other specifications to ensure the consistent and correct usage of their trademarks. One should not forget to use the letters TM, or R/REG if or when registered, usually to the upper right of the trade mark.
Most importantly, trade mark owners need to police the unauthorised use of their trade marks by third parties to avoid general or generic usage of their marks because even registered trade marks can, in this way, become descriptive. This can also apply to well-known registered trade marks.
According to the Handy Guide by INTA, a trade mark owner can avoid genericide by paying attention to the following:
- By enforcing proper grammatical usage. For example, the correct usage is: “New BMW cars/models – now on display!” instead of: “New BMW’s – now on display!”
- By using the general name/noun of the product after the trade mark – as above.
- By making the trade mark stand out from the rest of the text – eg in bold letters.
- By always using the trade mark notice next to the trademark – TM/tm or R/reg (if registered).
- By avoiding variations of the trade mark – no mis-spellings, no humorous forms, no abbreviations, no plural uses, and avoid combining the trademark to form other words.
- By avoiding use of the trade mark as a verb. For example, avoid the type of expression: ‘Let’s XEROX this article” – which appears to be a common usage in the USA.
- By avoiding (general) usage by third parties – stop infringements, passing off and abuses immediately, to retain the exclusivity of the trade mark and avoid blurring of a well-known mark.
If trade mark owners do not follow these guidelines, genericide can take place, and even a well-known trademark can lose its status and become descriptive. Thereby it can lose its ability to protect its proprietor’s rights and products.
Certain trade marks have become somewhat descriptive of the relevant goods and may be in danger of becoming generic such as GOOGLE, VASELINE, KREEPY-KRAWLY; PEPPADEW - and particularly in the USA trade marks such as KLEENEX and XEROX.
SOME SPECIAL AND PROBLEMATIC SITUATIONS
There are other situations, as discussed in the textbook of Webster and Page: South African Law of Trade Marks, where the circumstances are somewhat more complex, for example when the name of an article is used as a trade mark; or when a trade mark is adopted for plants; or when a trade mark is used for a unique or new article. Some of these situations are discussed briefly hereunder.
The name of an article as a trade mark – In the so-called RONPHA case (-the South African Registrar of Trade Marks v Wassenaar, ), the trade mark applicant had applied to register the trade mark RONPHA for a new hybrid grass. The Registrar of Trade Marks had refused to register the trade mark, and this was taken on appeal, ultimately to the Appellate Division (as it then was – now the Supreme Court of Appeal) which found that the applicant had used the word RONPHA, not as a trade mark, but particularly to designate his new grass cultivar. Mr Justice Reynolds is reported to have said: “Hence it seems to me that the word “RONPHA”, standing by itself, only meant at most a grass associated with the name of the respondent as an originator or producer, and naturally a seller of it. It did not, standing by itself, indicate that that grass was to be distinguished from the grass of other sellers who may have obtained their supplies from the respondent and then cultivated RONPHA for sale.”
A trade mark for plants – A nursery may of course register a trade mark for its goods as a mark of origin. However, it must be careful to use the trade mark for the purpose of distinguishing its plants, for example, from the same variety of plants produced by others and not for the purpose of distinguishing a particular variety produced by it from the other varieties produced by it. This was confirmed in the British decided case: Wheatcroft Brothers Ltd .
The name of a unique thing – If a new article has been made (and not patented), the world may copy it and call it by the same descriptive name that the maker has given the article. If the article has been patented, the world may copy it only when the patent has lapsed, or the term of the patent has expired, and call the article by the name that the maker has called it during the patent term. This was confirmed in the British decided case: Cellular Clothing Co v Maxton & Murray .
A trade mark for a new article – In the British decided case: Siegert v Findlater , the court through Fry JA said: “A person who produces a new article and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because until somebody else produces the same article there is nothing to distinguish it from.” As another example, in the so-called SHREDDED WHEAT case, these two words were used as the name of a product made by a patented process and registered in the name of the patentee as a trademark. It was pointed out in the appeal judgement that, as the patentee had enjoyed a de facto monopoly in the manufacture of the product, the difficulty of proving distinctiveness was extreme, and that the patentee’s evidence had failed to do so. It was held further that, even if a descriptive name is proved to have acquired a distinctive meaning, it by no means follows that it ought to have been registered unless it was “also adapted to distinguish” the goods or class of goods in question.
New articles and known articles – There is an important distinction, in legal terms, to be made between these two classes of articles. Although trade marks can be registered in respect of both classes of articles, in the absence of patent or other rights, for new articles, because the article generally has no other name, the risk exists that that the usually descriptive name given by the originator (-and which he often claims to be his trade mark) will be regarded by the public, not as a trade mark but as the name of the new article. One way of avoiding this risk is for the originator to give the article another name viz a second but non-descriptive name that can act as a trade mark. Unfortunately most originators prefer to ignore or avoid this course of action – often to their disadvantage.
From the above, it will be seen that genericide can be an insidious process that can stalk any trade mark even when it is being used and promoted in good faith.
Trade mark owners should have a detailed protocol for the correct and disciplined usage of their marks that is applied strictly – both for usage by their staff internally and for (PR) contract purposes externally.
Most importantly, trade mark owners need to be vigilant to ensure that their trade marks are not being used (-or abused) without authority by third parties. Whenever there is unauthorized use by a third party of a trade mark, the trade mark owner should not hesitate to seek advice from their trade mark attorney. It will hopefully save the trade mark from genericide viz from becoming GENERIC, and hence losing all rights that may have been developed at great cost and effort in that trade mark!