No more trademark protection

Too Famous? It May Backfire on Your Business!

Aspirin, Escalator, Sellotape and Kerosene are names that we are familiar with. Were you aware that they were all trademarks at one point in time? They were all owned by a certain individual or company and no one apart from the owners were allowed to use the mark when referring to the products or services the mark was used for.

Aspirin” or acetylsalicylic acid, a drug used as an analgesic to relieve minor pain, was a trademark owned by Bayer. However, through extensive use as a generic name in relation to pain relief pills, Bayer lost its trademark rights to “Aspirin” in France, Russia, Australia, UK, US and several other countries. It still has rights in Germany, Canada, Mexico and over 80 countries.

Escalator” was a trademark once owned by The Otis Elevator Company, the world’s largest manufacturer of vertical transportation systems, particularly elevators and escalators.

Sellotape” is a European brand of transparent, cellulose-based adhesive tape, and dates back to 1937 when Colin Kininmonth and George Gray coated Cellophane film with a natural rubber resin, creating a ‘sticky tape’ product.

Kerosene”, also known as paraffin, is a combustible hydrocarbon liquid. It was originally registered as a trademark by Abraham Gesner in 1854.

Can a trademark protection be lost?

The marks above became very famous and were unfortunately used in a wrong manner by the public. People started to refer to the trademarks when they wanted any product or service of the same type. The marks were used as nouns and verbs and became part of the daily use of the English language. Instead of referring to the product as “Aspirin” pills or “Kerosene” oil, the marks were so famous and so widely used that the public started referring to the pills as “Aspirin” and the oil as “Kerosene” by themselves. Both the fame of the mark and the lack of restriction on the trademark owners’ part on the usage of their trademark by consumers caused the registered trademarks to become a word in the English language, a word everybody – including competitors – could use!

As people become increasingly internet dependent and the use of search engines becomes second nature, another mark is at risk of becoming generic and losing its trademark rights. Why don’t you GOOGLE it to find out the mark in question?

Yes! Google, the world’s top search engine today is facing the same problem the marks above faced years ago. Google has appeared in the Merriam-Webster Online Dictionary as “to use the Google search engine to obtain information about (as a person) on the World Wide Web” and has also been included as an English word in the Oxford English Dictionary. In WordSpy, the online service for new words, “googling” is taken as a verb to the word “google”. One of the examples given on the use of “googling” is:

So if you’re Googling your prospective dates, a word of warning: Don’t jump to conclusions about someone just because Google says she murdered 50 people. Chances are, that’s an overstatement.

Amy Gilligan in her article in Telegraph-Herald, “Googling is newest date thing”

The trademark lawyers of Google Inc have been taking all measures possible to ensure the trademark does not become generic by sending warning letters to all those who use their trademark as a common verb. They have placed proper usage guidelines on their website to prevent the wrong use of their marks.

Even the owners of the trademark “Jacuzzi” by Jacuzzi Brands, Inc. are extremely concerned at the way their famous trademark – used on bathtubs and home spas – is used by the public and their competitors to the extent that they have laid down guidelines for the use of their trademark on their website www.jacuzzi.com. The example below was given on how their “Jacuzzi” mark should be used as an adjective and not a noun.

Let’s sit in the jacuzzi.
We know you will enjoy your jacuzzi.
Let’s sit in the Jacuzzi® whirlpool bath.
We know you will enjoy your Jacuzzi® hot tub.

If the trademark becomes a noun, then it will be considered generic and trademark rights will be lost. This means that the mark belongs in the public domain and competitors may lawfully use the mark to describe the product. The owner of the mark will no longer be able to stop copycats from using its trademark. The brand, built through hard work and heavy marketing, will decline in value while the market share previously held by the owner of the mark will be reduced when the brand is freely used by competitors.

How to prevent losing a trademark?

This is why extreme care must be taken by the owners to ensure their trademark is used as a badge of origin for their goods and services. Guidelines to how the trademark should be referred to should be provided to the public, through the owner’s website, brochures, packaging and other marketing collateral. Sales people should also be trained on how to use the trademark as an adjective and not a verb or noun.

If you are interested to apply for trademark protection or to learn more about protecting your intellectual property (IP) please visit our partner, KASS, a leading Southeast Asian IP boutique firm.

The view expressed in this article is intended to provide a general guide to the subject matter and does not constitute professional legal advice. You are advised to seek proper legal advice for your specific situation.

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