The United States Court of Appeals for the Ninth Circuit upheld a decision of the Arizona District Court which summarily dismissed an action seeking cancellation of the GOOGLE trade mark on the basis that it is generic. In doing so, the Court gave a fascinating insight into the test for "genericism" in the US and how prolific marks such as GOOGLE can survive attacks of this kind. In this article we discuss the case, and consider how genericisation might occur and be dealt with under Australian law.

Background

"Cybersquatting" or Domain Name Infringement

In February 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names which included the word "google". Each of these domain names paired the word "google" with some other term identifying a specific brand, person or product, including "googledisney.com" and "googlebarackobama.net".

Google objected to these registrations and filed a complaint with the National Arbitration Forum (NAF) which, at that time, decided domain name disputes both in the US and worldwide. Google successfully argued that Mr Gillespie's conduct amounted to domain name infringement and "cybersquatting" and that the domain names were confusingly similar to the GOOGLE trade mark and registered in bad faith. The NAF subsequently transferred the domain names to Google in May 2012.

Application to cancel the U.S. GOOGLE trade mark registration

Shortly after the NAF decision, Mr David Elliott filed an action for trade mark cancellation of the GOOGLE trade mark under the Lanham Act which allows cancellation of a registered trade mark if it is primarily understood as a "generic name for the goods and services…for which it is registered". Mr Elliott argued that the word "google" is primarily understood as "a generic term universally used to describe the act of internet searching”.

Mr Elliott made an application for summary judgment on the basis that the majority of the relevant public uses the word "google" as a verb and that such use constitutes generic use. Google argued that verb use does not automatically amount to generic use and that Mr Elliott failed to present sufficient evidence in support of his case.

The Arizona District Court found in Google's favour and granted summary judgment. Mr Elliott appealed unsuccessfully. The Court of Appeals for the Ninth Circuit affirmed the decision of the Arizona District Court and rejected Mr Elliott's arguments that the Arizona District Court failed to recognise the importance of verb use when applying the primary significance test and that it did not weigh the evidence he relied on properly.

The Court of Appeals held that the determining factor in whether a mark had become generic was whether the primary significance of the trade mark in the minds of the consuming public has become the product rather than the producer. If the public primarily understands a trade mark as describing what the particular good or service is, as opposed to where a particular mark comes from, then the mark has become generic.

What is "genericide"?

Under US law, if consumers understand a trade mark to be the product name, rather than the identifier of its exclusive source, the trade mark loses its distinctiveness and is said to have become "genericised".

The purpose of a trade mark is to identify or distinguish goods or services of a particular source from those of others. Non-distinctive or descriptive signs are not protectable as trade marks because they do not distinguish the particular goods or services of a trader from similar goods or services from other sources. Arbitrary or fanciful signs which employ words or phrases or comprise logos or devices with no commonly understood connection to the product or service are entitled to protection because they function as a trade mark.

Courts in the US have recognised that, over time, the holder of a valid trade mark registration (including those that were arbitrary or fanciful when first registered) may become a "victim of genericide". Genericide occurs when the public appropriates a trade mark and uses it as a or the generic name for particular goods or services irrespective of their source - a problem that prompted Google to adopt "Rules for proper usage" of the Google brand, including the requirement that users "use the trademark only as an adjective, never as a noun or a verb, and never in the plural or possessive form". Famous examples of US marks that have become generic include THERMOS, ASPIRIN, ESCALATOR, YO-YO, ZIPPER and CELLOPHANE where the popularity and use of these marks has resulted in them becoming the generic name for, or synonymous with, the general class of goods or services in respect of which the trade mark was registered.

It is generally accepted that a trade mark usually becomes generic against the intentions of the registered owner.

What is the situation in Australia?

As trade marks are territorial, the genericisation of a trade mark in the US does not necessarily mean a mark will also suffer the same fate elsewhere in the world. So what is the position in Australia?

In Australia, the Trade Marks Act 1995 (Cth) (the Act) provides that either the Registrar or a person who is adversely affected by a trade mark registration can apply to the Court to have the trade mark registration cancelled, removed or amended if the registered mark contains or consists of a sign that after the registration date "becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service". Accordingly, the relevant legal test in Australia is how retailers, wholesalers, manufacturers, advertisers and consumers within the trade in which the trade mark is used (which should be construed broadly to apply to persons nationally) use and understand the sign.

The case law in Australia in this area also suggests that the sign must be the only generic name for the article or service (see Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299 and Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) [2010] FCA 291). However, even where it is established that the registered trade mark is or contains a sign that has become generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service, the Court retains a discretion whether or not to cancel or remove the registration or otherwise to impose any condition or limitation as a condition of the registration remaining. The Court may exercise its discretion where the registered owner of the trade mark satisfies the Court that the loss of distinctiveness of the trade mark has not arisen through any act or fault of the owner. This will usually involve a consideration of matters such as the registered owner's own use of the mark and any acquiescence by it in respect of the use of the mark by third parties.

How can you protect your trade mark against genericism?

Trade mark owners can take steps to reduce the risk of their trade mark becoming generic by ensuring the mark is never used as a common noun or as the generic identifier of the relevant good(s) or service(s). A registered trade mark should always be used together with a common noun which serves as the generic description of the relevant good or service, for example "Apple iPad" or "Avis car rental".

The more difficult aspect, however, is the use by third parties and the public in general of a registered trade mark. A registered owner would be strongly advised to take the following steps to avoid the genericisation of their trade mark:

  • ensuring that competitors do not leverage or adopt the registered mark to describe competing products or services. This will reduce the chances of the registered mark becoming a generic description of the relevant product or service by third parties at large;
  • maintaining tight control over the use of the mark by licensees. This can be done by setting out strict requirements for use of the mark in the licence agreement and enforcing those requirements.
  • actively protecting the mark from misuse such as inappropriate use identified in the first dot point. As cancellation for genericisation is a matter of discretion, owners should fare better if they are proactive and vigilant. This may involve sending appropriate letters or actively promoting the proper way to use or refer to the trade mark;
  • considering a public campaign to educate users as to how to protect the brand – Xerox did this (maybe a little cryptically) in 2003 where it stated "when you use 'Xerox' the way you use 'aspirin,' we get a headache";
  • inventing and promoting an alternative generic name for the branded product to reduce the vulnerability of the trade mark itself. In some cases genericisation occurs when the registered trade mark is easier to use than the existing generic description, for example, "thermos" is much easier to say than "vacuum-insulated beverage container";
  • monitoring dictionary definitions and any other public reference to the trade mark.