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Africa: Genericisation of trademarks

17 July 2023
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Brand protection measures are key in securing a company’s image, goodwill and reputation from counterfeiters and infringers of intellectual property. Considering that companies and individuals invest time and money to develop a brand that resonates with their operations, it is critical that such brands be protected by preventing their unauthorised use by third parties who may want to reap where they did not sow.

At the point of protecting or registering their brands, companies and individuals are often not aware that there may come a time when their brands may become generic and thus susceptible to cancellation and removal from the trademarks register. This article covers the genericisation of trademarks and highlights a few measures that may be taken to prevent brands from becoming generic.

Genericisation is the process through which a trademark becomes so common in a particular market that it is generally considered to describe a category of products or services in the eyes of the public and not to identify the source of such products or services. Ironically, the more successful the brand, the more likely it is that the brand will become generic, which will result in watering down the strength of such trademarks. Common examples of generic trademarks include using the word ‘ASPIRIN’ to signify the general category of painkillers or even using the word ‘THERMOS’ to refer to vacuum flasks.

According to a survey conducted by the International Trademark Association (INTA), many African countries do not have legal provisions that establish clear criteria for judging a trademark as a generic term. Many African jurisdictions have only general provisions relating to distinctiveness which, in theory, can be used in this respect.

How does the genericisation of brands occur?

As indicated above, a trademark primarily becomes generic when consumers come to understand it as a generic term for a good or service. This may arise when a brand owner uses its trademark as a verb in its marketing materials to signify the category of products/services it offers consumers. For example, using the brand ‘XEROX’ to signify ‘photocopying’ on marketing material may result in consumers referring to the act of making photocopies as ‘making XEROXES’.

How, then, can brand owners deal with genericisation?

There have been limited legal remedies to genericisation.

That said, most trademark owners use a combination of legal, administrative or self-help measures to keep their trademarks from becoming generic. For example, the proprietors of the trademark would normally engage in active education of the public on the distinctiveness of their trademarks. In one instance, the owners of the trademark ‘XEROX’ successfully employed public education campaigns to prevent the public from using the term ‘XEROXING’ to refer to photocopying. Public campaigns would usually involve the use of advertising agents or sales personnel to educate the consumers.

In addition, to avoid the genericity of a trademark, it is highly recommended that brand owners develop appropriate guidelines that would indicate to employees, licensees and third-party marketing agents to stop using a protected trademark as a verb in marketing materials in place of an actual verb.

Further to the above, according to INTA, the options available to proprietors of trade marks in avoiding genericisation include but are not limited to the following: (i) the responsible use of the trademark in advertisements; (ii) vigilance in ensuring that brands are not used as  generic terms; and (iii) regularly addressing instances of misuse of the trademark – by taking appropriate action against the party misusing the brand;

Is there an upside to genericisation?

Despite its downsides, such as possible confusion between a particular brand and goods of inferior quality, genericisation of trademarks may also have its upside, such as popularising a brand. As such, the generic brand may have the potential to claim the lion’s share of the market because it is commonly used in interactions among consumers of the goods and services, leading to preference and a general bias towards the products.

In an ongoing court case in the United States of America, the registered proprietor of the trademark ‘Taco Tuesday’ is facing a legal challenge that could potentially render its trademark generic. The trademark was first registered in 1980 by a small Wyoming-based chain of restaurants. Today, more than 400 restaurants in more than 20 states are operating under the trademark ‘Taco Tuesday’. This is the backdrop against which the dispute arose.

If heard and determined by the court, the Taco Tuesday trademark case has the potential to establish a ground-breaking precedent on the issue of genericisation of trademarks in the United States of America. A reasoned judgment from a court of law would define the parameters of genericisation and outline the legal remedies available. This would lead to growth in jurisprudence surrounding trademark law and provide a basis for other jurisdictions worldwide to adopt a similar path to shore up their trademark protection regimes.

On the flip side, providing a legal tool for declaring trademarks to be generic may lead to misuse and abuse. The decision may give a renewed impetus for the infringement of legitimate trademarks with the aim of applying to the court to declare them as generic terms in the long run. Such a trend may discourage innovation and weaken the protection offered to owners of trademarks under the law.

In conclusion, can a mark that had become generic be recaptured? Yes, it can. According to the results of a survey conducted by INTA, a mark that had become generic can be recaptured. That could happen, in theory, by the mark acquiring a secondary meaning. However, evidence of acquired distinctiveness through use would be necessary in such a scenario.