The aim of every trademark owner is for its trademark to become well known on the market. However, this success can backfire when a trademark becomes so well known that consumers start to think that it is a generic name for the underlying products or services. Although this might appear to be the ultimate compliment, it may lead to the downfall of a trademark. Once a mark becomes a generic name it can no longer serve its purpose of distinguishing the products and services of the trademark owner from those of its competitors.
Well-known examples of trademarks which fell victim to this fate in the past are linoleum and aspirin. The owners of trademarks such as TOMTOM, JEEP and SPA must work hard to prevent their trademarks from becoming generic names; it is their responsibility to prevent this process.
Recently, the European Court of Justice dealt with a case concerning the trademark KORNSPITZ. Austrian firm Backaldrin had registered the name KORNSPITZ for a baking mix used by bakers to produce a certain type of bread roll. The roll was then sold to consumers – with Backaldrin’s permission – under the KORNSPITZ mark. Backaldrin's competitors felt the mark had become the generic name for this type of roll and asked the Austrian trademark authority to remove the trademark from the register.
The situation developed because the bakers did not make it clear to consumers that KORNSPITZ was a registered trademark. Although consumer perception is not the only factor to be taken into account, it plays a decisive role in determining whether a trademark has become a generic name. The fact that retailers are well aware that the name is a registered trademark does not detract from this.
Because Backaldrin did not take sufficient measures against sellers who used the trademark as a generic name, it failed to prevent the degeneration of the mark.
What can be done to stop a trademark becoming a generic name? It is important to choose a solid trademark and, if necessary, a solid generic name as soon as the product has been launched on the market. Generic terms such as 'moped' and 'storm umbrella' were consciously introduced to prevent the trademarks SOLEX and SENZ from degenerating into generic names. Further, it is important to take immediate and repeated action against any use of the trademark as a generic name – for example, by closely monitoring competitors, agents and particularly the media. To start with, Google it.
Bart ten Doeschate
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.