A United States appeal court has recently found in favour of Google, Inc in a case that sought to argue that the word GOOGLE should lose trade mark protection because it has become generic.
US trade mark legislation permits the cancellation of a registered trade mark on the ground that the primary significance of the mark to the relevant public is as a generic name for some or all of the goods or services for which it is registered. In other words, if consumers generally understand the term to refer to the type of goods or services, rather than the source of the goods and services, it has become generic and may be cancelled.
The plaintiffs, who had a number of domain names containing the word GOOGLE issued to them subsequently transferred to Google by reason of Google's trade mark registration, argued that the trade mark should be cancelled because the word GOOGLE is primarily understood as a generic term used to describe the act of internet searching.
They failed on the basis that:
- the correct question was whether GOOGLE had become a generic term for a good or service for which it was registered (for example, an internet search action), not a generic term for an act using such a good or service (and the appellants had only sought to argue the latter); and
- the appellants' argument that use of the term GOOGLE as a verb necessarily meant that it was being used as a generic term was incorrect. The court stated that a person can use a word as a verb or a noun, rather than as an adjective, while still understanding that word to be an indication of the source of relevant goods or services. Therefore, it was not sufficient for the appellants to show that GOOGLE was used as a verb; it also had to be shown such use was primarily in a generic sense (to refer to any searching using an internet search engine) rather than as a reference to using Google's search engine.
Genericide in Australia
In Australia, it is even more difficult to prove that a trade mark has become generic and should be cancelled. Rather than asking how relevant consumers understand the term, the Australian test requires that the sign has become 'generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service'. If a sign forming part of a registered trade mark has become so understood, the registered owner no longer has the exclusive right to use the trade mark in relation to that article, substance or service (or other goods or services of the same description), and the mark can be cancelled, or its registration rectified, to reflect that.
In addition, a person arguing that a trade mark has become generic under Australian law must show that there is general acceptance within the relevant trade that the sign is the name of the relevant article, substance or service and that there is no other generic name. By contrast, under US law the focus is on whether the name itself has one primary meaning (not whether it is the only name that refers to a particular good or service).
Unsurprisingly, terms have rarely been the subject of genericide in Australia. The Google decision referred to ASPIRIN, CELLOPHANE and THERMOS as examples of names that had become generic terms. In Australia, both CELLOPHANE and THERMOS remain registered in respect of cellulose sheets and flasks and other vessels respectively, even though arguably many consumers would not realise that they are trade marks of one producer. (However, the word ASPIRIN is registered for pharmaceutical preparations only as part of the term BAYER ASPIRIN and other similar trade marks, and not by itself.)
As well as arguments along the same lines as led Google to success in the US, applicants seeking that a trade mark be removed on the basis that it is generic face the hurdle of having to prove that the name has become generic not amongst relevant consumers, but among persons in the relevant trade, who would presumably have a greater understanding of the precise meaning of terms used in their trade than a consumer.
However, the owner of a trade mark that has become at least somewhat generic may find it more difficult to enforce its trade mark rights against alleged infringers. By starting to become used in a generic sense, a term becomes more descriptive of relevant goods or services, even though it may not (before being used by the relevant trader) have been inherently descriptive or even suggestive of the type of goods or services. This means that use of the term may more easily be found not to be use 'as a trade mark', especially if used in conjunction with other, more prominent brands. Accordingly, even if a trade mark is not vulnerable to cancellation, it may become more difficult to enforce.