One of the important revisions in the new Trademark Law implemented on 1 May 2014 concerns the risk of cancellation and the limitations on the safeguarding of rights when a registered trademark becomes genericised. This again pushes the hot issue of “trademark genericisation” to the forefront.
As the term suggests, trademark genericisation is a phenomenon where the distinctiveness of a trademark is weakened and gradually becomes the generic name of the specific goods. Numerous trademarks that were famous for a time have tasted the bitter lesson of trademark genericisation, e.g. Aspirin, Thermos, Walkman, Jeep, and 优盘 (the Chinese characters for USB drive). It is the author’s opinion that there are three main reasons leading to trademark genericisation.
Inherently weak distinctiveness of the trademark. With a view to making their trademark appealing and seeking to draw a connection between the trademark and the goods or services for which it is designated, some enterprises will select, at the outset when designing the trademark, a representation that indirectly describes or hints at the product or the raw materials contained therein, resulting in relatively weak distinctiveness and opening an avenue for future genericisation of the trademark.
Improper use of the trademark. With a view to better promoting its brand, the trademark rights holder will publicise to an excessive degree the function, features, raw materials, etc., of the product hinted at by the trademark, and ignore reasonable use of the trademark, leading the relevant public to mistakenly believe that the trademark is the generic name of a certain product. Improper use by media, government authorities, dictionaries and infringers also gives a powerful boost to the genericisation of a trademark.
Relatively high fame of a trademark. Through observation, it is easy to see that the great majority of trademarks facing genericisation are those that have high degree of fame in their relevant industry or sector. It is precisely because of its high fame that a trademark will become the target that competitors in the same industry and illegal infringers strive to imitate and copy.
Furthermore, when a trademark holds a monopoly position in a specific industry or sector for a long period of time, the relevant public will habitually establish a one-to-one connection between the trademark and the specific product. Gradually, the fact that it is a trademark for a product gets forgotten, and it regresses into becoming the generic name of the specific product.
Pursuant to articles 49 and 59 of the new Trademark Law, the genericisation of a trademark may result in the cancellation of its registration. And even if its registration is retained, there will be restrictions on the ability to protect it due to the inability to prohibit others from making reasonable use of it.
Attention to distinctiveness when applying for a trademark. The distinctiveness of a trademark is its most important feature. A representation that is not distinctive or only weakly distinctive cannot be registered and used as a trademark. Accordingly, when applying for a trademark, attention needs to be paid to its distinctiveness, and a balance needs to be struck between the trademark’s distinctiveness and market promotion. The distinctiveness of a trademark should never be sacrificed for the purpose of facilitating future market promotion. In short, the more distinctive a trademark is, the easier it is to secure registration, the better it satisfies legal provisions on trademark protection and the less likely it is to face the risk of genericisation in future.
Standardise use. On the one hand, the rights holder has to standardise its own use of the trademark. It is recommended that the TM or ® symbol be added when actually using the trademark, to inform and educate the public and remind competitors in the industry, and infringers, that the representation is the rights holder’s trademark.
On the other hand, the rights holder has to establish a sound monitoring system to monitor in real time the use of the representation by such authorities as governments, relevant industry associations, dictionaries, etc. If instances of the trademark representation being used or explained as a generic name are discovered, measures should be taken immediately to halt the same and standardise the use of the trademark.
Advertising campaign. With a view to preventing trademark genericisation, it is recommended that a rights holder intensify its advertising and publicity, emphasising that a certain representation is its originally created trademark. Publicity materials can include introduction of the brand, advertising for the products bearing the brand, media reports on the protection of the brand, sharing precedent and successful prosecution and enforcement cases, etc. It is recommended that the symbol TM or ® appear wherever the trademark representation is used.
Active safeguarding of rights. A rights holder has to effectively safeguard its rights in a timely manner. It first has to establish a sound trademark registration and market monitoring system in order to promptly root out instances of pirate registration and infringement, and actively formulate the corresponding rights protection strategies. This can demonstrate the importance that the rights holder attaches to trademark protection and its stance on this issue and, on the other hand, the outcome of vigorous safeguarding of rights will provide material and support for future publicity and safeguarding of rights, and powerful counter-evidence in any potential case of cancellation of a genericised trademark.
Establishing anti-genericisation master file and collecting evidence. Even if the rights holder has made endeavours in the above countermeasures, its trademark may still face potential cancellation moves filed by others. Therefore, the collection of the above-mentioned evidence to defend against a potential cancellation is essential. It is recommended that a rights holder establish an “anti-genericisation master file” for the timely collection of evidence, to provide strong support in defence against possible future cancellations.
If a trademark rights holder is familiar with the reasons for, and the harm of, trademark genericisation and formulates an effective prevention and response strategy, it can avoid the risk of trademark genericisation, and also see its brand maintain and increase its value in its operations in a long run.