Genericide of trade marks occurs when a trade mark, originally distinctive and associated with a
specific product or service, becomes so widely used that it loses its unique status and becomes a common term for the general product or service itself. In other words, the trade mark becomes generic, lacking the ability to identify and distinguish the source of origin of the goods or services.
This happens when people call products by a name that is widely recognised (i.e. the trade mark) rather than by the actual product name. Take this example: “Rachel had to put on a band-aid after she fell while using her rollerblades, since the kleenex she had used was insufficient to wipe away her blood.”
The trade marks “Kleenex®”, “Band-aid®,” and “Rollerblade®,” are at risk of becoming generic terms for similar products in their categories if used in the above manner.
When a trade mark becomes generic, it loses its legal protection, as trade marks are meant to identify and distinguish the source of goods or services. When a trade mark undergoes genericide, it poses significant challenges for the trade mark owner as it can no longer be protected as a trade mark, ultimately weakening the brand’s identity and exclusivity.
How do Trade Marks become Generic?
The genericide of trade marks can be attributed to several factors. One significant reason is the widespread and consistent use of a trade mark over an extended period, resulting in it becoming deeply ingrained in the public consciousness. When a trade mark becomes synonymous with a particular product or service, consumers tend to use the trade mark as the common, generic term. Insufficient efforts by trade mark owners to enforce their rights and educate the public about the distinction between the trade mark (i.e., brand name) and the generic term can also contribute to the genericide. Genericide also occurs when the trade mark owner is the only manufacturer of the product, so consumers end up referring to the product as the brand name.
Effect of Genericide
Genericide has significant impacts on both trade mark owners and consumers. For trade mark owners, the loss of distinctiveness and legal protection can be detrimental to their brand’s reputation and market position. Genericide undermines the ability to differentiate their products or services from competitors, leading to potential loss of market share and decreased brand value. Without exclusive rights to their trade mark, owners may find it challenging to enforce against infringers, further weakening their position in the marketplace. On the consumer side, genericide can create confusion and diminish the assurance of quality associated with specific brands. When a trade mark becomes a generic term, consumers may no longer associate it with a particular source of origin, which can lead to uncertainty and a decline in consumer trust. Overall, the impact of genericide highlights the importance of trade mark protection and the need for trade mark owners to actively manage and preserve the distinctiveness of their brands.
Here are some popular items which people may at times use incorrectly to describe the product, instead of using the generic term. We have included the generic term and the relevant trade mark:
- Slow cooker: Sunbeam Products has the trade mark and exclusive rights to use Crock-Pot®.
- Dictation machines: Dictaphone Corporation has the trade mark and exclusive rights to use Dictaphone® (previously it was in the name of Nuance Communications).
- Glass wool: Owens Corning has the trade mark and exclusive rights to use Fibreglass®.
- Lip balm: Wyeth has the trade mark and exclusive rights to use Chapstick® (previously it was GSK).
- Liquid motion lamp: Mathmos has the trade mark and exclusive rights to use Lava Lamp®.
- Flying disc: Wham-O has the trade mark and exclusive rights to use Frisbee®.
- Sticky notes: 3M has the trade mark and exclusive rights to use Post-It®.
- Modelling clay: General Mills Fun Group has the trade mark and exclusive rights to use Play-Doh® (previously it was Hasbro).
- Inline skates: Technica Group has the trade mark and exclusive rights to use Rollerblades® (previously it was Nordica Sports Company).
- Table tennis: Escalade Sports has the trade mark and exclusive rights to use Ping-Pong® (previously it was Parker Brothers).
Use of these trade marks constitutes trade mark infringement. The generic terms must be used instead.
There have been notable instances where trade mark owners are preventing genericide and are preserving the distinctiveness of their brands. One such example is the brand “Coke®,” which has managed to maintain its identity as a cola brand through extensive policing by the proprietor of the brand, Coca Cola®, of incorrect use. A further example is “Google®”, where they are trying to ensure that the brand name is not used as a verb, thus protecting it as a trade mark for search engines. These cases demonstrate the importance of proactive brand management and efforts by trade mark owners to prevent genericide and preserve the unique identity of their brands.
Strategies to Prevent Genericide
There are several strategies that can be employed to avoid genericide of trade marks:
- Use the trade mark as an adjective to the generic term (in other words, add a descriptor after the trade mark) – e.g., Kleenex® facial tissues.
- Avoid using the trade mark as a verb – e.g., to google instead of Google® search engine.
- Avoid using the trade mark as a noun – e.g., ipod instead of iPod® portable media player.
- Do not use the trade mark in a plural form – e.g., Legos instead of Lego® bricks.
- Add the word “brand” after the trade mark – e.g., John Deere® brand.
- If possible, offer more than one product or service so that the brand does not become generic for a category.
- In marketing campaigns, advertise the general, descriptive term alongside of the trade mark.
- Use special forms or capitalisation to distinguish trade marks, from the generic term.
- Monitor use by licensees.
- Use the trade mark symbol to signify ownership.
- Monitor your trade mark and protect it against infringement.
Proactively managing your trade mark to ensure that it does not become generic is an important and a vital part of your business. Once a trade mark becomes generic, it will no longer be protected as a trade mark and will be able to be freely used by third parties.
Back to our sentence about Rachel, we should refer to the trade marks mentioned as adjectives, describing the noun: “Rachel had to put on a Band-Aid® adhesive bandage after she fell while using her Rollerblades® inline skates since the Kleenex® tissue she used was insufficient to wipe away her blood.”