Most trade mark owners will be aware that their UK or European Union trade mark registration is likely to become vulnerable to cancellation on the grounds of non-use if they do not make genuine use of the trade mark in the relevant territory for five years or more after registration. However, there are other ways in which a trade mark registration can become vulnerable to cancellation.
A UK or European Union trade mark registration is also liable to be revoked if, in consequence of acts or inactivity of the registered owner, the trade mark has become the common name in the trade for the products or services for which it is registered. This is commonly known as ‘genericide’.
At most risk are trade marks that have a clear meaning in the context of the registered goods and services and trade marks that consist of acronyms for descriptive phrases. However, brand owners that have a dominant market position or a monopoly in a particular technology, for example due to patent protection, can also find their trade marks at risk. If consumers aren’t used to seeing different brand names for the same type of product or service, they can start to use the trade mark interchangeably with, or even in place of, the generic name.
The good news is that precautions can be taken to prevent genericide. Here we set out our top five tips for brand owners.
1. Use the trade mark as a trade mark
It might sound obvious, but the most important thing to do is to ensure you use your trade mark correctly, not only on packaging, marketing materials and consumer facing documents, but also verbally and in internal documents. A trade mark should be used as an adjective alongside a generic word, and never as a verb, a possessive, a noun or in the plural.
2. Create clear brand guidelines
It’s important to pass the same message on to anyone who may use your trade mark on your behalf or with your authorisation, such as a distributor, manufacturer or partner in a joint venture. To assist with this, it would be sensible to put together a clear set of brand guidelines to set out exactly how your trade mark should be used. As part of this, you should decide on the generic term you would like to use to refer to your goods or services, if this is not immediately obvious. Your legal advisor should be able to assist you with preparation of your brand guidelines if required.
3. Use the registered trade mark symbol
Once your trade mark is registered, you can use the ® symbol next to it in the territory in which it is registered. This gives notice to third parties that your mark is a registered trade mark. It may act as a deterrent, discouraging them from using the mark without your permission. Furthermore, it will send a message that the mark is not a generic word. However, note that it is very important not to use the ® symbol, or in any way imply the trade mark is registered, if that is not the case.
4. Take action against incorrect use by third parties
In addition to ensuring your own use of the trade mark is correct, it’s important not to ignore incorrect use by third parties, otherwise the trade mark may be deemed to have become generic due to the inactivity of the proprietor. If you see your trade mark being used incorrectly, for example in a blog post or newspaper article, bring it to your legal advisor’s attention so that you can discuss if it would be appropriate to contact the third party to politely explain how the mark should be used. It is also possible to contact publishers of dictionaries to discuss the definition of your trade mark in their publication and to request that it is made clear in future editions that the mark is a trade mark.
5. Consider a marketing campaign
If incorrect use of your trade mark is more widespread, it may not be realistic to contact every person or company individually, and you may wish to consider running a marketing campaign to try to address the issue and educate people about how your trade mark should be used on a wider scale. There are many examples of household names doing just this. In 2003, photocopier firm Xerox ran an advert stating "When you use 'Xerox' the way you use 'aspirin,' we get a headache". More recently, Velcro companies released a video across social media asking consumers, through the medium of song, to say hook and loop and not VELCRO as the generic term. Whilst campaigns like this are realistically unlikely to convince every person to use the trade mark correctly, they do raise public awareness and demonstrate the action a brand owner has taken to prevent a trade mark from becoming generic.
Do get in touch with your usual contact at Mewburn Ellis if you have any questions about how to protect your trade mark from genericide.