Nov 5, 20218 min read

All About Generic Marks & More (Part-1)

Trademark Genericide

The Trademarks Act, 1999 is a legislation that provides for trademark registration. A trademark, in common words, is a mark that is usually represented graphically and distinguishes the goods and services of one business from that of another. While discussing this, the question of distinctiveness arises. In answer to this, Sections 9 and 11 of the Trademarks Act, 1999, clarify that the primary procedural requirement for trademark registration is the sufficient distinctiveness of the mark. However, some registered trademarks have also succumbed to overt usage and entered the public domain. As a result of this, the owner of such a Trademark loses all rights over it.

This occurrence, also called the ‘Trademark Genericide’, is defined as the loss of all rights over a particular trademark when it enters the public domain through its consumers’ overt usage of the Trademark. The psychology behind this phenomenon is that consumers begin to associate the name of the product or service with itself rather than its source. Ultimately, the registered Trademark turns into the common descriptive name of the product, which results in the loss of all rights of the Trademark owner over it.

A generic trademark or a proprietary eponym denotes an entire class of goods or services over time. For example, the Collins dictionary defines the word “Escalator” as “An escalator is a moving staircase on which people can go from one level of a building to another.” Prior to this, the term was a trademark of the Otis Elevator company before it became a victim of Trademark Genericide.

How do Generic Marks Come About?

Owners of trademarks are found promoting the use of these trademarks as common household words. However, the effect that this practice creates is counter-productive because customers use these names to identify the product rather than its source. This entire process of genericide is detrimental to intellectual property owners because it punishes the manufacturer who has poured in extensive skill and resources to popularise their product.

While there is no ironclad standard to determine the genericity of a trademark, there was a single question asked - one of fact. “What do the buyers understand by the name in question?” This test, set forth by Judge Learned Hand in the case of Bayer Co., Inc. v. United Drug Co., is also called the ‘Public Perception’ test. When a certain trademark falls into the public domain by virtue of its answer to this question, all attribution to its source is lost. A certain drug known to pharmacists by the name “Acetyl Salicylic Acid” was popularised as “Aspirin”. Over time, the term “Aspirin” became the name of the drug, and acquired a descriptive nature and was declared generic. Similarly, it was observed that several buyers, manufacturers, and shop-owners knew no other name for “Cellophane”. To all of them, the word itself described a product that protected goods while simultaneously keeping them visible.

The first use of the term ‘Genericide’ was seen in the 7th March 1983 issue of ‘Legal Times’, in an article - ‘Court Rules that ‘Monopoly’ Has Suffered Genericide’. It described a U.S. trademark case related to the popular board game ‘Monopoly’, which garnered so much fame that the owner of its Trademark no longer had the right to take action against derivations and imitations that contained the term ‘Monopoly’.

While there are no concrete standards to determine whether the rights on a mark have been dissolved, every case is decided on its merits. According to the U.K. Patents, Designs and Trademarks Act, 1883, if a mark was publicly used by more than three individuals for the same or similar class of goods, it must be deemed ‘common to the trade’ of such goods. However, due to the impractical and ambiguous nature of the rule, it was dropped in later statutes. In India, Section 36 of the Trademarks Act, 1999 declares that if a specific mark is popularly used by traders as the very name of an article or service and not as identification of its source, the mark becomes prone to genericity and the cancellation of owners’ rights over the mark.

In the case of patents, no matter how distinct the name of a patented good is, if after two years of expiry of the patent, the name becomes the sole description of the good, the name and its associated Trademark lose their value and are struck off the register. Aspirin is one such example. Through the evolution of several cases of similar nature, a logical test to determine if a trademark has become publici juris is to see if the use of the Trademark by a third party deceives the public in a manner that nobody can be made to believe that they are purchasing the good of a particular business, the rights over the Trademark are cancelled.

In business owners’ attempts to create goodwill, they tend to use aggressive advertisement campaigns. For instance, Yahoo advertised its brand with taglines like ‘Do You Yahoo?’, which rebrands the trademark ‘Yahoo’ as a verb rather than a source identifier, thereby unintentionally increasing the Trademark’s genericity. ‘Naked Licensing’ is another threat to trademarks whereby trademark owners allow their licensees to use their marks without quality control in licensing agreements or do not implement the provisions if any. This practice dilutes the mark’s value and renders the mark generic in the long run.

Needless to add, the public is also at fault because of widespread linguistic usage of trademarks, such as “Xerox the notebook”, “Google the meaning” and “Shazam the song”, instead of “Photocopy the notebook on a Xerox copy machine”, “Look for the meaning on Google” and “Use Shazam to find the song”. The media, too, plays a role in popularising the verbal usage of trademarks in similar ways as the public.

Trademark Genericide in India

In the landmark case of B.V. Ilango v. Rank Xerox Limited (2012) S.C.C. OnLine IPAB 154, also called the “Xerox Case”, Rank Xerox Limited successfully defended its Trademark before the Intellectual Property Appellate Board (IPAB). It was held that extensive measures were taken to check the inappropriate usage of trademarks, which was the rationale behind why “Xerox” would not be considered a generic term.

“The one factor which leads us in favour of the respondent in this issue, is the uniform acknowledgement of all those who had used the word Xerox, that their use was inadvertent and that they would refrain from doing anything in violation of the Trademark rights of the respondent. This then is the evidence that the public was conscious of the ownership of the Trademark.”, the IPAB explained.

It was also stated that while a trademark owner may desire to acquire goodwill of the public if the public stops identifying the mark with the origin and begin using it as a synonym for the good or the service itself, the Trademark stands the risk of slipping into the public domain. Zipper and Laundromat are examples of the same.

The Bombay High Court, in the case of A.J Von Wulfing v. D.H Jivandas and Co. (A.I.R. 1926 Bom 200), declared that while a trademark may fall into the public domain or, in other words, become publici juris, it could still obtain the benefit of passing off. The bench also elucidated the role that courts play in trademark protection and stated that a court requires solid proof that shows without a doubt that the mark was so famous that nobody could be deceived by its use and could be made to believe that they are buying the goods of a particular business that was entitled to the use of that Trademark. This standard currently serves as the test to determine publici juris as also put forth in the case of Ford v. Foster (1872) 7 Ch A 611 at p. 623.

The Allahabad High Court in Ram Rakhpal v. Amrit Dhara Pharmacy And Ors. (A.I.R. 1957 All 683) declared that a trademark with ample goodwill could at any point lose its character and slip into the public domain. It was held that a name would not succumb to Trademark Genericide as long as the trademark owner manages to assert his rights over their Trademark.

The judgement of Jagpin Breweries Limited v. Shaw Wallace and Company Limited (2011 IPAB 48) differed in opinion from that of the Himalaya Case and stated that the number 5000 in “Haywards 5000” was not a generic term and that the respondents had successfully asserted their right to use the term in the current class of goods. No evidence proved the trade usage of the term and that it described the potency of the beer, which favoured the respondents. The IPAB also held that if the term “5000” was proved to be descriptive of potency, it would have become descriptive.

Another interesting aspect of Trademark Genericide in India is that a mark can resume its status as a trademark in some countries and remain publici juris in others. This was elucidated in the cases of National Starch v. Munn’s Patent Maisona (1894) 11 RPC 261 and I.T.C. Limited v. Tobacco Company Limited Bombay (1992) 12 P.T.C. 38.

Through an understanding of the evolution of Trademark Genericide in India, it is accurate to say that all Indian courts assert the usage of persevering steps and measures that must be taken by a trademark owner in India, even if the public widely uses the Trademark as a synonym for the good or service. This will prevent the descension of trademarks into the public domain.

Measures Taken by Trademark Owners to Prevent Genericide

Many trademark holders fail to employ precautions when a product is patented. No other competitor has the right to manufacture the product for 17 years regardless of its name. This is the case with Aspirin. During the life of the patent for Aspirin, the owner did not attempt to create some generic name for the product before popularising the trademarked name. On the contrary, the generic use of the term was popularised. By the time the patent lapsed, it was too late to recover the Trademark. Aspirin was now generic.

Trademark owners who are well-educated on the subject are aware of the measures that must be taken to prevent genericide. When a new product is brought into the market, it is essential to introduce a brand name and a generic name to go along with it so that the consuming public does not have to use the brand name to identify competing products and services. Examples of this are “Palm Pilot - connected organisers”, “Walkman - personal stereos”, and “Books2Go - library services.”

“Escalator” might still have been a trademark if its owners promoted the product as a “moving stairway”, apart from the Trademark itself. Owners of trademarks must make it a rule not to use them as nouns or verbs but as adjectives. While doing so, an important nuance is always to capitalise the mark used. This will help reduce any genericity associated with it.

However, the above rules are no guarantee that the mark will never enter publici juris. For instance, “Light Beer” and “Lite Beer” were deemed as generic because they both denote a kind of beer that is light in taste and low in alcohol content and calories. This is why trademark owners must have an alternate term that is not too descriptive or so complicated that the public does not accept it.

While they may seem insignificant at first glance, these measures go a long way in safeguarding the rights associated with a trademark. Any threat to a mark can be warded off if a more generic description of the good is popularised. This step is potent because the Indian statute awards a two year grace period after the expiry of a patent before the Trademark becomes cancellable.

This grace period can be used to form a separate trademark from the generic name of the good or service in case this has not been undertaken before the patent’s expiry. For example, Chrysler promoted awareness of its trademark “Jeep” with a very creative advertising campaign - “They invented S.U.V. because they can’t call them “Jeep”.” Here, one understands that S.U.V. is a generic name while “Jeep” is Chrysler’s Trademark. Further measures can be to use capital letters, place the mark in quotes, use various distinct fonts, and use the term “Registered” or the symbols ® or ™.

‘Trademark Policing’ is another practical step in fighting genericide. Alertness and willingness to act against the misuse of trademarks are prerequisites for the proper use of this method. Users of trademarks, including licensees, the media and the consumers, must be educated on appropriate usage. If a mark is being used haphazardly, steps must be employed to restrain that sort of usage.

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All About Generic Marks & More (Part-1)

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