31/01/2025
What do trampoline, walkman, and escalator have in common? These once-protected trade marks became generic terms, losing their legal protection. This article explores how this happens and what brand owners can do to prevent it.
A popular trade mark can fall victim to genericide if the mark “in consequence of acts or inactivity of the trade mark owner, has become the common name in trade for a product or service for which it is registered. This is the test in UK law. Similar provisions are found in trade mark laws around the world. This is the legal test for genericide. If a trade mark becomes generic it is liable to lose its legal protection if the registration is challenged.
In the US, a historic example of genericide, falls with the mark TRAMPOLINE. Nissen Trampoline Co was awarded a US patent for a “tumbling device” in 1945, and later obtained several US registrations for marks including the word TRAMPOLINE, protected for their newly invented gymnastics equipment. By 1961, Nissen was involved in a lawsuit involving both patent and trade mark infringement. The defendant claimed that ‘trampoline’ had become a generic term and was “the only word by which this equipment is generally known and as such has fallen into the public domain, where it cannot serve as a trade mark”. The judge upheld the defendant’s claims and deemed Nissen Trampoline Co’s trade mark registrations invalid and cancelled .
Some trade marks are registered in combination with the house mark of the producer of the goods. It then becomes an interesting question as to the extent of the rights of the trade mark registration if a third party uses, without consent, the non-house mark element of the registered mark. For example, the Sony Group Company registered the trade mark SONY WALKMAN in 1981 for their innovative portable cassette record player with headphones.
In a 2002 Austrian trade mark infringement suit, Sony attempted to enforce their legal rights in their SONY WALKMAN trade mark to prevent a third-party from using the trade mark WALKMAN MIT SPEIL in relation to portable cassette players. The third-party argued, in defence, that the use of the element ‘walkman’ in their mark did not amount to trade mark infringement because there is no trade mark protection in the ‘walkman’ name on its own. By then, it had become a generic term for a subtype of portable electronic goods. The judge referenced that, by 1986, the word ‘walkman’ was already found in dictionaries of German speaking countries, presented as the generic term for the product. The finding was that the word, by the time of the legal action, was colloquially used by the general public as a synonym of the goods themselves and not in particular reference to products from Sony. The Austrian court held that, because Sony had not been “working to ensure that its trade mark was not used as a generic term in referenced works”, it had to accept that the scope of the registered mark was perhaps less than it had thought and could not be used to stop use of only part of the mark.
What can a brand owner do?
Some brand owners take proactive steps to educate everyone. In doing so, they aim to push home the message to prevent generic use of their trade marks, or at least build the basis for a defence if the trade mark registrations are challenged on the grounds of genericide.
A famous example of a company taking steps to prevent their trade mark from genericide comes from Velcro IP Holdings LLC. The company – known for their hook and loop fasteners – launched a video campaign titled ‘Don’t Say Velcro’. This was an attempt to educate on proper use of the VELCRO brand name, that is, to use the term ‘Hook-and-loop’ in place of VELCRO when referring to the product in general. This was a light-hearted but direct campaign.
UK company Portakabin Limited, owners of portable toilet and shower units registered under the brand name PORTALOO, issued a well-reported series of cease and desist letters. In addition, they published an informative article on their company website. The article stressed that “the word Portaloo is a registered trade mark” and not the generic name for all portable toilets. Portakabin Limited went on to detail how calling all portable toilet units by their own registered trade mark PORTALOO is improper use. They stressed that only portable toilet and shower units produced by Portakabin can be called Portaloo buildings.
Campaigns directed at educating the trade and the public on proper trade mark use in relation to famous brand names could help build a case in evidence to support a challenge. The aim is to rebut the part of any attack claiming that ‘inactivity’ on the part of the brand owner has contributed to the genericide of the mark.
Trade marks serve an essential function in enabling customers to identify and distinguish goods and services from different sources. This is referred to in the law as the badge of origin. When a word becomes widely used as the commonplace term for the product itself, this is where problems may lie. In developing a new product, companies are recommended to think of the descriptive name the trade will want to use, and develop their brand strategy around that. Keeping an eye on how the marks are used in promotions may be legal input well spent. Ultimately, trade marks are adjectives, not nouns or verbs . Hoover are clear that their products are Hoover vacuum cleaners. Jacuzzi use the ® symbol when referring to their name and call their products hot tubs or whirlpool baths. Use of this symbol is not mandatory but it can send a strong signal if the brand is registered in the relevant country.
As a brand owner, if you see any unauthorised use of your mark you don’t like, we would be happy to advise. Dictionaries can be asked to change their reference. Wikipedia entries are amendable. It may be that the unauthorised use is trade mark infringement. Our team are here to help and work with clients to develop brand guidelines.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
