How Can We Lose Distinctiveness Due to Improper Use of Trademark?

In common use, a trademark can lose its distinctiveness due to inappropriate usage. If other companies are using the same or similar trademarks, then it becomes generic, resulting in loss of brand identity. When this occurs, the registration of a trademark may be invalidated due to a lack of distinctiveness

Sometimes there is a downside of being successful.

In the corporate world, if a company's product is popular enough, it risks something called genericization, which is when the public associates the brand name with the generic class of product itself.

Bigger are the brands, greater is the need for protection from not just infringement and falsification but also “trademark genericide”. This concept isn’t much talked about but this problem exists more than it is thought to be.

The reason behind Trademark Genericide is simple. The trademark becomes genericized due to the continuous use by the public who use the term to denote a particular product rather than its source. The more popular the product, the chances of it dying a generic death increase.

Some of the popular trademarked names that have now become generic because of the wrongful and continuous use by the public are Xerox, Google, Bisleri.

Company:?Xerox

#Xerox Introduced in:?1938

What it's supposed to be called:?Copy machine, photocopier

According to?Xerox, the first xerographic copy was made in a makeshift laboratory in Astoria, Queens on October 22, 1938. 70-plus years later,?trillions?of pages have been copied, as college students and interns can attest.

Xerox tried its best to fight the genericization of its name, publishing a series of ads urging people to remember the trademark.

Company: Bisleri

#Bisleri introduced in 1967

What it's supposed to be called: packaged drinking water.

Right now Bisleri is the most popular water bottle brand across the country and due to the company’s huge success, and people have started calling all mineral water bottle bisleri and lot of other companies have come up with copied water bottles in the market.?So, if you are going to buy a bottle of Bisleri, then you need to keep your eyes open because the bottle in your hand can be?Belsri, Bilseri, Brislei or Bislaar instead of Bisleri. This is one of the reasons why Bisleri has framed its tagline this way: ‘Har paani ki bottle Bisleri nahi hoti’! So that a trademark cannot died generic death.

Company:?Google

#Google Introduced in:?1998

What it’s supposed to be called:?search engine, searching the internet.

Google's meteoric rise to search-engine dominance inevitably led to its name turning into a verb: Today, people use "google" to mean to look up on the internet, regardless of which search engine is used. Despite the ubiquity of the term, a federal court?ruled against a man?who tried to strip Google of its trademark after he registered hundreds of sites with names like "GoogleBarackObama.com." The ruling signaled that companies can still protect their trademarks even after they turn into generic verbs.

Judicial Review:

Google

Google it is a common phrase used in day to day conversations. Similarly Zipper, Aspirin, Frisbee etc. they all share a common fate of being mistaken as the product itself rather than identifying the Source. This is exactly what trademark genericide is.

While “Google” has held on to their trademark and have avoided genericide in the case of “Elliott v. Google Inc.”. In 2017, Google had to actually face intense proceedings to prove that their customers in the market still identify them as search engine and that their mark is still relevant and hasn’t become synonymous to “surfing the internet”. In this case it was observed that trademarks don’t become generic just like that. In fact only the courts can declare it to be generic. A certain David Elliot tried to register 763 domain names which included the search engine “Google”. He filed a suit stating that Google is primarily a substitute for “internet searching”. Eventually the jury was not convinced that Google had become generic as Google won the UDRP proceedings. They won on various grounds including the evidence of that fact that the domains were being registered in bad faith. Google presented public surveys to the Court in order to show that that the public still perceived it as one of the search engines.

Xerox

In ?2012, the IPAB while deciding?B.V Ilango vs. Rank Xerox Ltd., held that if a company or brand had taken extensive measures to rectify and police the incorrect usage of the their trademarked term including sending cease and desist notices, it will not be considered as a generic term. The statement of the IPAB – “perhaps the respondent has acted just in time to save its mark losing its life..”?shows that Xerox is indeed in a precarious position and must act pro-actively so as to prevent its trademark from dying a generic death.

One of the methods Xerox uses is to place advertisements informing potential consumers of its trademark rights. ?

One advertisement showed a brightly colored vest with a zip on it. The message was that ‘Zipper’ was once a trademark and that if people “use the term Xerox like they do Zipper”, Xerox will be in danger of losing its trademark rights.

Another example said: “When you use ‘Xerox’ the way you use ‘Aspirin,’ we get a headache.” Aspirin was a trademark owned by pharmaceutical company Bayer until 1919.

Conclusion

Companies should take active steps to prevent their trademarks from becoming generic. Public perception and understanding is the key for determining whether a registered trademark has lost its source-denoting value and become generic. While evaluating public perception, a broad set of factors should be considered including availability of alternative terms, the trademark owner's use and promotion of the mark etc.

P.S.: This article is co-authored by my colleague?Aditi Amar Sharma