Killing them softly with our words


KEROSENE, FLIP-PHONE, ESCALATOR, DRY ICE, VIDEOTAPE…

Can you guess what these terms have in common?

These all used to be registered trade marks, but suffered the most insidious demise of all: Genericide.

Genericide, while not being a type of weed repellent, may affect the life expectancy of a trade mark. Essentially, the function of a trade mark is to indicate the commercial origin of goods and/or services. When we say EVERY LITTLE HELPS®, you make a link with Tesco. The same goes for KITKAT® which belongs to Nestlé or, for the students among us, LACK®, the famous budget-friendly table from Ikea.

When a trade mark is no longer capable of indicating the origin of a good or service because it has become the common designation for them, it is said that the mark has become generic.

This can have disastrous consequences for trade mark owners as the Trade Marks Act 1994 tells us that an already registered trade mark may be revoked if it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

Trade marks can be one of the most valuable assets a company has. This is especially true of start-ups which, while they may fail to turn a profit for several years, at the very least manage to operate and obtain finance by leveraging the goodwill of their brand and reputation.

It is therefore important to protect a company’s brand, or more legally speaking, its trade marks from Genericide.

There are some simple steps trade marks owners can take to ensure that their marks do not fall victim of their success:

  1. Choose an inherently distinctive mark. Not only will it help an applicant get through the UK IPO’s examination more easily, but it will be much harder for a third party to argue that it is a the common word for something. If you’re temporarily lacking in imagination, why not have your cat take a short stroll on your keyboard?
  2. Avoid using your trade mark as a verb, as such a practice will slowly turn your mark into the generic word in spite of the fact it is the very word you want protection for. Therefore, don’t HOOVER®, but vacuum clean. Don’t GOOGLE®, but conduct an online search. Also, don’t TASER® anyone, just use a stun gun.
  3. As much as possible, use the sign “®” after your trade mark to signal that it has been officially registered with the UK Intellectual Property Office or elsewhere. E.g.: GOOGLE®
  4. Let other people mention your mark on their website (so long as it isn’t misleading). After all, any publicity is good publicity. However, always make sure that they both identify it as a registered trade mark and that they indicate you or your company as the proprietor. More often than not, a “softly-softly” approach in the form of a kind worded letter will work wonders. If it doesn’t, contact us, and we’ll make sure it does.

Using your trade mark while fulfilling marketing, advertising and legal requirements can be very tricky. For comprehensive guidance on the correct use of trade marks, contact us.


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