Features

Google battles Genericide

A recent case from across the pond serves as a useful reminder of the dangers of genericide.

Catharina Waller Trade Mark and Patent Attorney T: 020 7551 7701 [email protected]

Catharina joined Bates Wells Braithwaite in 2014 from an international boutique intellectual property law firm, where she was responsible for the intellectual property portfolios of a variety of UK and international clients.

Catharina Waller advises all or services, its ‘owner’ can lose recognition and in trade mark owners to establish turn, custom or (in the case of a charity) donations. use guidelines The recent case

What is genericide? In Elliott v Google (Federal Court of Arizona), the opponent argued that: ‘the Google mark has become Surprisingly, in some circumstances, even registering generic because a majority of the public understands a name as a trade mark will not guarantee that you the word ‘Google’, when used as a verb, to mean the continue to own it. ‘Genericide’ occurs when a trade indiscriminate act of searching on the internet without mark becomes so well-known that it is no longer regard to the used.’ seen as a ‘brand’, but rather as a generic term for the goods or services in question. Classic examples Even though consumers use the term ‘to Google’ of names that started off as trade marks but became as a way of describing searching online generally, generic include escalator, aspirin and yo-yo (many Google was able to prove that the vast majority of people think ‘Hoover’ falls into this category but in users understand the word ‘Google’ to be a trade fact the Hoover company has managed to hang onto mark designating the engine, rather its right to the name). More recently, Google has been than search engines in general. In any event, the at risk. court confirmed that use of a trade marked term as a verb is not fundamentally incapable of identifying For a company or charity that has used its brand for a a producer or denoting source. It used the example long time, and has built up a significant reputation by of the phrase ‘I’ll Photoshop the image’ as meaning virtue of their investment in the brand, its trade mark manipulating an image by using the trademarked rights are often its most valuable asset. Losing them Photoshop graphics editing software developed and to genericide can have serious consequences: if others sold by Adobe Systems. can use the mark freely in relation to their own goods

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There’s more likely to be a problem where use of What can you do to stop your mark the mark is indiscriminate and no longer refers to becoming generic? the trade mark owner’s goods or services, which can happen if a mark becomes very popular and is n Distinguish the trade mark from the widely used. surrounding text in some way. Capitalise the What can you do to avoid it? first letter, capitalise or italicise the entire mark, place the mark in quotes or use a Google was able to avoid a finding of genericide different type style or font. despite the wider understanding of the mark as a n Use a generic term following the trade mark, verb, due to its very proactive campaign to maintain for example: Google search engine, Google the term as a trade mark. For example it goes to great search, Google web search. lengths to control dictionary definitions of its mark and has developed a set of ‘Rules for proper usage’, n Try not to use the mark as a noun or a verb – which it asks publishers and the like to follow. Of adjectival use is better – eg. ‘Hoover vacuum course, it will never achieve full control over how cleaners’ rather than ‘Hoovers’. others use its name, but the law is usually inclined to n Don’t remove, distort or alter any element of treat genuine efforts to stop a name becoming generic a trade mark’s brand feature. For Google, for as sufficient. example, this includes modifying a Google trade mark through hyphenation, combination Naturally, Google has a large budget to spend on or abbreviation, such as: Googliscious, protecting rights in its name, but guidelines of this Googlyoogly, Googlemania. kind could be applied to practically any trade mark – see the sidebar. Communicating some basic rules for use of the mark to those inside your organisation as well as to any foreign branches, distributors, or other working partners is a simple way of protecting ‘Google was able to avoid a finding a brand. of genericide despite the wider understanding of the mark as a verb, In the UK there is no legal requirement to use ® after a registered trade mark or ™ after an unregistered due to its very proactive campaign trade mark, but these can help remind the public that to maintain the term as a trade mark’ the name is a proprietary ‘brand’. Do however bear in mind that the laws on use of these symbols vary from country to country (and in many places – including the UK – it’s an offence to use ® where the mark is Find out more not registered). General information on trade marks is available on the government website at https://www.gov.uk/ Monitoring the marketplace to ensure that competitors intellectual-property/trade-marks don’t use the mark in relation to your goods or services is key to maintaining trade mark rights in For specific information on registering or general, and is also a good way to prevent genericide. protecting your trade mark, please contact one And, if time and budget allow, monitoring media use of our specialist team for advice of the mark is advisable to ensure that the mark is www.bwbllp.com/services/trade-marks/people used in the correct way.

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