Registering your trade mark is just the beginning of protecting your intellectual property rights in that trade mark. The trade mark itself must continue to function as a “badge of origin” distinguishing your business and brand in the wider market.
Whilst creating a strong and identifiable brand is beneficial for business, sometimes achieving mass brand recognition can backfire.
Trade mark genericide, is what happens when a term is used to identify a category of goods or services, instead of the source of the goods or services. Examples of this include: aspirin, escalator, cellophane and yo-yo. It is also in danger of happening to Rollerblades, Lycra, Band-Aid, Post-It and Xerox.
Trade mark rights can be lost if the mark is not correctly used. Rights in a trade mark can be lost by:
- not using it;
- licensing to others without controlling the nature and quality of the goods/services provided;
- misusing the mark so that it ceases to indicate the source of the product and becomes just another generic word in the language; or
- allowing others to misuse the mark, such as in editorial text or dictionaries.
When this occurs and the trade mark outgrows the constraints of traditional trade mark protection, the consequences can be quite significant and include:
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- Loss of exclusivity
This may result in competitors leveraging your trade mark to promote their products. - Loss of identity
Potentially making it increasingly difficult to achieve cut through via advertising. - Loss of IP rights
Risk of removal of the trade mark from the register as it is no longer inherently adapted to identify the particular mark. - Loss of value
The brand is often one of a company’s most valuable assets and a diminished impact of the brand will affect the overall financial position of the entity. - Loss of sales
A loss of identity and exclusivity may result in lost sales.
- Loss of exclusivity
Case: “Genericide”
In the case of Kettle Chip Co. Pty Ltd. V. Pepsico. Australia Pty Ltd (1995), Lindgren J. notes that:
“Frito-Lay has sought to render the word constituting the trade mark generic by invoking a sense of the word unfamiliar to the public today, although perhaps well known in former times. In “Johnson & Johnson” (at FCR 355), Gummow J. said… that the court should be slow to put on the paragraph an interpretation which would countenance the undermining of a registered trademark by an assiduous infringer. Counsel for Kettle graphically referred to the steps taken by Frito-Lay as “genericide”, which I take to mean on the facts of this case, the emptying of the word KETTLE of its secondary meaning in favour of a generalisation of its reference when used in relation to potato chips.”
It is imperative that a trade mark is used properly as a “badge of origin” for a particular product or service provided by your business. Equally as vital is preventing the use of your trade mark as a generic reference to the relevant product or service as doing so makes it vulnerable to genericide.
How can you better protect your trade mark?
Listed below are 12 tips on how to use your trade mark properly in order to protect it:
- Using it in the form in which it is registered.
- Use it as an adjective rather than a noun or a verb. For example: Don’t “hoover the floor” or “buy a hoover” – instead “buy a HOOVER® vacuum cleaner.” Don’t say “Xerox it” say “Make a copy with your Xerox copier.”
- Never promote your trade mark descriptively. For example, Google does not encourage using the phrase “Google it”.
- Give the trade mark prominence by using capital letters, italics or bold type, especially when used in text.
- Never abbreviate or hyphenate to form a compound word, or use it in the plural.
- Use a trade mark notice which may appear immediately adjacent to the trade mark, or use an asterix in proximity to the mark which draws attention to a notice, such as “Registered Trade mark of XYZ Pty Ltd”.
- Use the symbol ® or any other indication of registration – ONLY when the mark is registered.
- Use the generic name of the goods after the trade mark – e.g. “MALIBU rum”, not “malibu”.
- Maintain tight control of your trade marks through licences and strict usage requirements.
- Enforce your exclusive rights at an early stage. If you become aware of someone misusing your trade mark, act immediately to stop it.
- Enforce your exclusive rights if someone misuses your trademark.
- Educate and remind the public about the proper use of your trade mark. This can be achieved through consumer education via advertising campaigns, videos written online content and seminars.
In fact..Velcro has famously embarked on a campaign to educate people about the use of their trade mark. Watch it below!
If you would like to find out how to better protect your brand and business, simply reach out to our team today. We are more than happy to assist you with reviews of your marketing materials – from advertising and brochures through to print materials and more – to ensure your brand continues to be protected.
Please contact us with any questions you may have about how to protect yourself and your business.