GENERICIDE
companies of today has reached eye-watering levels. Apple, sitting highest, is worth nearly $119 billion—around 30 times more than 100th placed Nintendo (just over $4 billion)—and increased its brand value by 21% since 2013. Te remaining 98 places are littered with
R
“COURTS HAVE TAKEN THE POSITION THAT THE PUBLIC’S UNDERSTANDING OF THE TERM AS GENERIC MUST HAVE DWINDLED TO ALMOST NOTHING.”
famous names and equally impressive figures. Google, breathing down Apple’s neck in second place, was worth around $107 billion and grew by 15% from the previous year. It’s hardly surprising that Google and other
well-known brands including Sony (52nd), Xerox (62nd) and Tiffany & Co (71st) find themselves among the top 100, but these companies also catch the eye for a very different reason: all four have either had skirmishes with, or fallen victim to, the old but rare phenomenon of genericide. Genericide—when a trademark no longer
indicates source of origin but has become the generic term for the product or service it protects—is surely a brand’s worst nightmare. All companies seek to become world-beaters, but their very success can render them vulnerable and threaten the value they have built up, in a cruel twist of fate.
Lost protection Tere is a long list of brands that were once trademarked but have lost protection, at least in some countries. Aspirin, Escalator, Pina Colada and Cellophane are four examples, while Sony lost its ‘Walkman’ trademark in Austria in 2002 aſter the country’s Supreme Court ruled that it had become a generic term for portable stereos. Xerox, famous for making photocopying
machines, has survived the claws of genericide, but only aſter creating clever marketing campaigns—“when you use ‘Xerox’ the way you use ‘Aspirin’, we get a headache” was one of its messages. Luxury brand Tiffany & Co is trying to fend off claims by wholesaler Costo that the terms ‘Tiffany’ and ‘Tiffany setting’ are generic for a certain engagement ring setting. Last year, a US district court rejected a claim
that ‘Google’, according to a majority of the public, means searching on the internet regardless of the search engine used. Te judge in the case, Stephen McNamee, sitting at the US District Court for the District of Arizona, said there is there is “no genuine dispute” about whether a majority of internet search users primarily associate the word ‘Google’ with the company. Although ‘Google’ does appear in several
dictionaries, the plaintiffs were unable to cite a single one whose definition of the word ‘Google’ neglects to mention the trademark significance of the term, the judge added.
www.worldipreview.com
eading through Interbrand’s ranking of the 100 Best Global Brands last year, it’s clear that the value of the elite
David Stone, partner at law firm Simmons
& Simmons in London, says: “Google is one of those where even though people use it in a way that ‘trademarks101’ tells us is not right, it’s so famous and so identified with the brand that I think people recognise it as an indication of source of origin. No-one says ‘I google using Yahoo’ because they’re aware that Google and Yahoo are different things.” Peter Harvey, founding partner of
law
firm Harvey Siskind, in San Francisco, adds that it seems unlikely the ‘Google’ mark will ever become generic, given the fame of the brand, but that well-known marks are at least theoretically among the most vulnerable. “If a vast majority of the consuming public,
when asked how they would describe doing an online search with a search engine, answered ‘I googled it’, then Google might have a problem,” he adds.
Success symbols What causes brands to become generic? “It’s a symbol of success,” says Stone. “Te brand is so successful it becomes too closely associated with the product or service itself in the minds of the public, such that it becomes the generic term for that product.” Under the Lanham Act in the US, Harvey
explains, the test for determining ‘genericness’ is found in answer to the question: “What is the primary significance of the registered mark to the relevant consuming public?” “If the term signifies ‘what’ something is,
rather than ‘who makes or puts it out’, it is likely the term has become generic,” he says. Stone explains that trademarks are never
truly generic until they are expunged from the register, so while Hoover is oſten mentioned as being synonymous with vacuum cleaners when discussing genericide, “it has not been taken off the register anywhere in the world as far as I know”. Genericide is also a jurisdictional concept, he adds, so some trademarks may be generic in one country but not others. ‘Aspirin’, made by German pharmaceutical company Bayer, became generic in the US, UK and France as part of the post-World War I Treaty of Versailles but is still enforced in many other countries worldwide. Although the incidence of genericide
throughout history seems to be fairly low, trademark owners shouldn’t rest on their laurels. Google, for example, has published a long list of dos and don’ts when it comes to using its trademark, including employing it only as an adjective, and never a noun or verb. So while “I just googled it” would worry Google, “I used the Google search engine” would be fine.
World Intellectual Property Review May/June 2015 19
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