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21 December 2020
Imagine if 'zoom' became a synonym for conducting online video meetings, regardless of the app used – or worse, became a verb. In this way, ZOOM would lose its distinctiveness and become a generic trademark and its owners would be unable to stop others from using 'zoom' to refer to online conferencing services.
This would not be a first. Over the years, many brands have come to realise the adverse consequences of a trademark that is too successful.
Once distinctive trademarks (eg, ASPIRIN, ESCALATOR and THERMOS) have become generic marks (ie, descriptive of the relevant goods or services or generally defining a class of goods or services, rather than identifying the goods or services of a particular trader), this process is known as 'trademark genericide'.
A trademark is any word, name, sign, symbol, logo, container, shape, pattern or ornamentation, colour or combination of these which traders use to distinguish their products or services from others'. It is an effective communication tool, with the potential to convey intellectual and emotional attributes and messages about a brand and its reputation, products and services.
The basic functions of a trademark are to serve as a badge of origin – or as a source identifier – and distinguish the goods or services of one business from the same or similar goods or services of another business in the course of trade.
The law protects trademarks that achieve this by allowing them to be registered and exclusively used by the trademark owner. As such, terms that are deemed generic are not entitled to trademark protection, because they are in the public domain.
For example, consumers have learned to identify types of French fry based on the restaurant that they come from. This is because the essential product, the French fry, already existed, so companies had to apply their trademark to a product already in existence.
More often than not, genericide takes place in the realm of invented products or a new type of product or service. An often strong, distinctive, non-generic and valid trademark enters common parlance and gradually loses its distinctiveness over time to the point where it becomes the common name of the relevant product or service, widely used by consumers and even by competitors.
This 'death by nouning' or 'death by verbing' phenomenon occurs when the public no longer perceives the trademarked term as an indicator of source, but as a description for the class of products or services (eg, GOOGLE, TWEET, PHOTOSHOP and FACETIME).
When this happens, the mark can no longer serve its distinguishing function and the company runs the risk of its brand name becoming so commonly used that a judge rules it too generic to be a trademark.(1)
In general, the objective is for goods or services to become something everyone wants and for their trademark to become a household brand. But there is a fine line between having your brand be a household name and being just another house.
Astute brand owners should adopt a strict protocol for the consistent proper usage of their trademarks:
Establishing trademark recognition with consumers and maintaining that distinctiveness in the marketplace requires concerted and consistent effort, as well as strategic planning. No matter the size of a company, proper trademark use and enforcement is essential to retaining the value and strength of a brand.
For further information on this topic please contact Jeanine Coetzer at Spoor & Fisher by telephone (+27 12 676 1111) or email (email@example.com). The Spoor & Fisher website can be accessed at www.spoor.com.
(1) For example, in South Africa the Supreme Court of Appeal found that LIQUORICE ALLSORTS had become the generic name for a particular liquorice confectionery product. The benchmark judgment was handed down in 2000 in Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd.
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