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Trade Mark Genericide

22 February 2016

Trade mark genericism (or genericide) refers to when a registered trade mark becomes a common name in general public use for a product or service in respect of which it is registered. For example, “escalator” and “corn flakes”.

The New Zealand Trade Marks Act 2002 provides that a trade mark registration may be revoked on the grounds of genericism. Genericism was discussed in the recent High Court decision of Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd. The case considered whether the registered mark “Batts” used in the “Pink Batts” brand had become a generic term occurring as a consequence of any acts or inactivity of Tasman.

The decision ruled in Tasman’s favour. The Judge determined that the term “Batts” had not become a common name in general public use, and Tasman’s registered trade mark had not lost its ability to distinguish Tasman’s products from those of others.[1] It was held that the term “Batts” had not become a commonly accepted replacement for “insulation”.

While a well-known trade mark can be an excellent business asset, obtaining substantial brand awareness in the marketplace may result in your registration being vulnerable as a result of your own “acts or inactivity”. Here are a few suggestions to help prevent your registered trade mark from becoming a generic term of description.

  1. Use the generic product name as well as your trade mark. Try to use your trade mark in conjunction with the generic name for your product or service. For example, VASELINE® petroleum jelly. This approach avoids the registered mark being used as a noun.
  2. Correct grammatical use. Advertising should express the correct grammatical use of the trade mark (i.e. use your trade mark as an adjective).
    Correct use: “I need to use my VIVID® marker.”
    Incorrect use:“I need to use my VIVID®.”
  3. Make your trade mark visible. Consumers should be able to easily distinguish between the trade mark and product descriptions in labels or advertising.
  4. Use a trade mark notice. The use of ® with a registered trade mark is an effective, but underutilised way of notifying consumers that the mark is a registered trade mark.
  5. Avoid variation. Inconsistent use of a trade mark can lead consumers to think that improper use is acceptable. Be vigilant in noticing and correcting spelling changes, abbreviations, plurals or apostrophes added to the trade mark. The same applies to the combination with other words or trade marks.

Once a trade mark is used as a common descriptor by the general public for your goods or services it is very difficult to reverse and prevent such use. If your mark becomes a common name in general public use to the extent that it has ceased to distinguish your goods and services from those of others, then your registration may be at risk. The key is to proactively take steps to use your mark appropriately and to prevent others from using it in a way which may erode the distinctiveness of the brand.

[1] Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2015] NZCA 602 at [115]

 

Shelley Slade-Gully is an Associate in the Commercial Corporate team at Norris Ward McKinnon. Contact Shelley at shelley.sladegully@nwm.co.nz

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