Too much Success is Not Always Good: A Look at Genericization of Trademarks

This post was first published on 10th June, 2014.

Trademarks are vital for the commercialization and growth of an industry. It is a valuable asset for a business entity as it acts as a link between the goods and the producer. It is through trademarks that consumers identify a particular product, as a result of which, it can be rightly said that the reputation of a company is built on trademarks.

As a brand gains popularity, it is subject to various attacks in the form of passing off and infringement. Asserting the mark against infringers is crucial for maintaining the reputation of the trademark. However, too much popularity can also be risky, as it can lead to genericization of the trademark.

Genericization of a mark occurs when the mark has become immensely popular and is used to colloquially describe a particular type of service or product. In other words, genericization results in the brand name being used for referring to all the products or services of a particular category, regardless of the trade origin.

From a legal standpoint, genericization of a mark can have serious consequences. In India, Section 9(1)(c) of the Trademarks Act which lays down one of the grounds for absolute refusal of a trademark states that:

S. 9(1):  The trademarks – 

…(c) which consist exclusively of marks or indications which have become customary in the current language or in bona fide and established practices of the trade.

Shall not be registered:

Provided that a trademark shall not be refused registration if before the date of application for registration, it has acquired a distinctive character as a result of the use made of it or is a well-known trademark.

Thus, one can clearly see that once a mark or indication becomes customary in a particular language or in bona fide and established practices of trade, no person can claim monopoly over the use of such a mark.

The same position has been illustrated in 15 USC § 1064 of the US Law, which lays down the grounds for cancellation of registration. Trademark Law of UK, which has been the primary inspiration behind the Indian Trademark Law also mentions the same point in Section 3(1)(d) of the Trademarks Act, 1994, which is couched in the same language as that of Section 9(1)(c) of the Indian Trademarks Act.

There have been a lot of instances wherein brands have fallen prey to their own success. Zipper, Aspirin and Heroin are examples of trademarks that have become genericized in the US. Recently, the jewelry chain Tiffany & Co. has gotten into the middle of a legal battle with US wholesaler Costco, which it has accused of infringing on its trademark by selling ‘Tiffany’ engagement rings. The main contention of Costco is that the mark ‘Tiffany’ is no longer valid on the alleged ground, now that it is a generic term for the rings in question.

India has also had its fair share of incidents relating to genericization of marks, as can be seen from the case of Band-Aid. Though there was a huge dispute over genericization of the mark ‘Xerox’ in India, the IPAB Order No. 229/2012 dated September 21, 2012 concluded that ‘Xerox’ had not become generic.

Source: from here

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