Genericide: an adman's dream?

Why are some brand owners choosing names that invite genericism? Dominic Farnsworth looks at a growing trend and discusses the legal implications.

‘Genericide’ is a term that has a fatal resonance. Traditionally most IP professionals believe genericism is tantamount to the death of a trademark. It strikes at its very essence, its capability to differentiate competing goods and services, its commercial value.

But despite conventional wisdom, a growing number of brand owners are taking a different view. They are actively attempting to imprint their brand names as far into the public’s psyche as possible. Are they risking their IP? And if so, why?

The traditional view
When IP professionals and in-house attorneys advise brand owners on using their trademarks, most stress the steps they need to take to prevent the trademark from becoming generic. This includes making sure:

• The trademark is used as a proper adjective;
• The trademark is differentiated within the text by use of bold, capitals, underlining, italics or different font, size or colour;
• The trademark is stressed as a registered trademark through the use of ® or the use of a statement that the trademark is registered in a particular territory;
• The trademark is used as it appears on the register. It should not be used in possessive or plural forms or used as a verb or noun;
• The trademark is followed by a generic term for the product;
• The proprietor of the trademark clamps down on any third party use of the trademark in a manner that tends towards genericism.

Most corporations take this advice very seriously and proactively seek to prevent genericism occurring. This typically includes educating the public on how to use the trademark properly. It also requires acting against anyone who misuses their trademarks – usually by responding to public references about their brand made in a generic manner.

A notice about rollerblade in-line skates makes the point succinctly: ‘Be careful not to slip when using Rollerblade® Skates. Because Rollerblade® is a brand name, references to “rollerblades, rollerbladers, rollerblading, blades, bladers and blading” are incorrect. Proper generic terms for the product, athletes and sport are in-line skates, in-line skaters and in-line skating.’

In certain situations, the dangers of genericide are inherently high. Trademarks at greatest risk are those that relate to patented inventions, where the proprietor has enjoyed a period of monopoly during the life of the patent. That is to say when the trademark alone has been associated with the invention. In these situations, there is a real risk that the public will over identify the trademark with the invention in question.

This has been the precise problem in many of the high profile instances of genericide where protection has been lost in one or more territories. Casualties include the famous brands elevator, cellophane, aspirin and thermos.

It is also, of course, perfectly possible for non-patented trademarks to slip into generic use. In a recent example in France, Bardinet lost its trademark registration for pina colada because the court was not convinced the public viewed it as a trademark, but rather as a cocktail. That the trademark proprietor had failed to take action to prevent the term becoming generic was, in the court’s view, a major consideration in their decision.

Courting risk
It might seem counterproductive that a brand owner could have a product so successful that it risked losing its registered trademark protection. Yet many  marketing and advertising professionals appear to endorse this approach.

Advertising, promotions and increasingly sponsorship are conventional avenues for increasing brand awareness. Brand owners are constantly searching for new ways of burning their brands in public’s conscience. So it is perhaps not surprising to hear some advocate that the more deeply ingrained a brand becomes into common language, and the more conversational it becomes, the better.

And recently, it seems, brand owners have had an increasing tendency to seek exactly this. Certain trademarks such as Yahoo have been used in corporate promotions as verbs – ‘do you Yahoo?’ In some of these cases, professionals argue that the risk of genericism is acceptably low since the term is used to refer to a Yahoo search, not the use of web search engines in general and therefore is still a clear reference to the proprietor’s product.

Even more controversial is the fact that increasing numbers of brand owners are taking an informed strategic decision to choose a particular trademark because the public is likely to adopt it in a colloquial way.

It might seem counterproductive that a brand owner could have a product so successful that it risked losing its registered trademark protection. Yet many  marketing and advertising professionals appear to endorse this approach.

Entering the vernacular
Wolff Olins, the international brand consultancy has advised a number of clients on this specific issue. Alice Huang, communications director at Wolff Olins explains: ‘We advised the Brazilian telecom giant, Telemar, on its choice of the name “Oi” for its launch into the mobile market. “Oi” Portuguese for “Hi”, succinctly represented the brand’s values and was deliberately chosen as it was colloquial, informal and entirely contrary to the corporate feel of many of its competitors. It was also felt that its simplicity conveyed the spirited vibrancy of Brazilian culture.

‘The brand has been a resounding success. Launched in 2002, it reached over a million subscribers in five months and the term “Oi” has started to replace the term “mobile” in conversation – to hear someone saying call me on my “Oi” is not uncommon. Interestingly, a competitor recently briefed its staff never to answer the phone with “Oi” in the future.’

Similarly, the demise of a single telephone directory enquiry number in the UK in 2003 resulted in various operators competing to seize the largest market share at the launch of the new numbers. Their efforts were accompanied by extensive marketing campaigns. The largest share was won by The Number, which is owned by US directory service provider Info NXX Inc. Its iconic advertising campaign – featuring two runners with 118 118 on their T-shirts – was perhaps the most well-known campaign in the UK in 2003. Moreover the deliberate attempt to make their name colloquial in various advertising lines to encourage reference to the number (e.g. ‘What’s The Number’, ‘Call The Number’, ‘We’ve got your Number’) made The Number one of the UK’s most memorable brands.

Moving forward?
While the traditional anti-generic approach is still valid, particularly in patent-related circumstances, advertisers are becoming much more creative in their attempts to increase brand recognition and value.

IP advisers must accept that there may be strong commercial reasons why corporations might wish to act contrary to the received wisdom on genericide and adapt to the new playing ground.

Businesses must still look to obtain trademark registrations wherever possible. But the inherent tension between genericism and distinctiveness means corporations should also look at complimentary areas of law for additional protection. Design rights, copyright, unfair competition laws and common law right may offer additional protection when registered trademark protection starts to look thin.

Certainly in the UK, increased reliance is likely to be placed on the laws of passing off. However, here the challenge will be to prove that the brand has acquired distinctiveness by becoming uniquely associated, in the public’s eyes, with a particular product or usage.

Dominic Farnsworth is a partner in the Media Brands and Technology team at Lewis Silkin solicitors, London. He has written about brand issues for The Times, Campaign, Marketing Week and Trademark World

This article first appeared in IP Review, issue 7