Leading up to Valentine's Day this year, it was claimed that Costco in the United States of America had been selling diamond rings labelled as "Tiffany". Upset by the use of the Tiffany name as a "carat" to attract consumers, Tiffany & Co. issued trade mark infringement proceedings against Costco. Costco has reportedly counterclaimed against Tiffany & Co., alleging that "Tiffany" is a generic term used to describe a type of diamond ring setting.
The Tiffany & Co. and Costco saga serves as a reminder that businesses should take steps to attempt to maintain distinctiveness in their registered trade marks and to prevent their trade marks from becoming generic (known as genericism). The issue of revocation of trade marks based on genericism was addressed in a 2011 decision of the Intellectual Property Office of New Zealand. In that case, Simpson Grierson acted for DB Breweries in successfully defending a revocation action against its registered RADLER trade mark.
Businesses can take a number of steps to maintain distinctiveness in their registered trade marks. These include:
- Using the ® or ™ symbol next to their registered trade marks (the ® symbol cannot be used for unregistered trade marks - use ™ instead for them);
- Asserting rights in their registered trade marks in footers of advertisements and media, such as "TRADE MARK X is a registered New Zealand trade mark of XYZ Company Ltd";
- Avoiding use of their trade marks as verbs or for describing characteristics of goods or services; and
- Taking enforcement measures against unauthorised use of their trade marks by third parties.
If you believe that your trade mark is in danger of becoming generic, we can advise you on more specific steps that you can take.
So, diamonds are forever, but trade marks need a little more care to make them last. For advice on how to maintain distinctiveness in your trade marks, give us a call.