Trade Marks act as a badge of origin. They are rights that can be registered in things like brand names, logos and even colours, to inform consumers of the source of goods or services and therefore what sort of quality of they can expect from them.
In a story that hit the media today, it has been reported that Baron Sandford of Sandford Industries Ltd sent a cease and desist letter to the Hamilton-based online discount apparel store Lastseason.co.nz to demand they stop selling a well-known style of footwear by reference to the word JANDALS.
The JANDALS Trade Mark
Said to be a derivative of ‘Japanese sandals’, Morris Yock (alleged to be the inventor of the shoe) filed to protect the word in 1957, and it was registered as a Trade Mark on 4 January 1963. The Trade Mark was on sold to several other companies before being bought by Sandford Industries Ltd in 1995. The Register shows that the Trade Mark is registered for ‘footwear and all types of hosiery’ and ‘articles of clothing’.
Questions have been raised as to whether Sandford could enforce its rights in the Trade Mark because many say the word is ‘generic’.
The Issue of Genericism
The purpose of a Trade Mark is to be distinctive of a supplier, not descriptive of the goods. Therefore, Trade Marks are one area of law where a registered rights owner can be a victim of its own success. Once a word becomes ‘a common name in general public use for a product or service in respect of which it is registered’ – that is, generic – it can in fact be revoked from the Trade Marks register in New Zealand. Examples of Trade Marks that have been revoked from registers around the world for becoming generic include aspirin, thermos, yo-yo and escalator. Trade Marks such as HOOVER and GOOGLE have been said to be in danger of being revoked for genericism, as they are commonly used to describe an action in every day language (i.e you could Google someone hoovering).