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Internet increases danger of brands becoming genericised

Zone IP (The Zone Corporation)
19 October 2012

Internet and social media increase danger of brands becoming genericised

Impending court action between Pink® Batts® supplier Tasman Insulation and German-owned Knauf Insulation over alleged infringement of the Batts® trade mark highlights the growing danger of brands becoming genericised, warns a Wellington trade mark lawyer.

Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property consultancy in Wellington, said regardless of the outcome in this particular court case, it was important that companies guard against their trade marks passing into common use.

“The Internet and the ease of widespread mass communication through social media means that it is now easier than it has ever been for registered brands to fall into genericuse.

“This means that the Pink® Batts® case is particularly interesting and important here because the genericisation of brands in New Zealand has never really been put to the test, but it’s not uncommon as some previous examples illustrate.

“The name ASPIRIN, originally a trademark of Bayer, was declared generic in the United States some time ago, as was the name THERMOS (originally a Thermos GmbH trademark), and even the name ESCALATOR. However, THERMOS® is still a registered trade mark for flasks and insulated containers in New Zealand.

“For example, you would think that words or names, depending on your perspective, like Jandals® for footwear, Band-Aid® for adhesive plasters, Boogie® for body boards, Jacuzzi® for whirlpool spas and Weed Eater® for grass and weedcutting machines are just everyday words, but they are not. They are registered trademarks which can only be used by their owners for those goods,” said Mr Doucas.

Once a trademark passes into common usage, and if the courts find it has come into generic usage, the trademark registration can be revoked.

“Recently we saw word Radler® upheld as a trade mark here in New Zealand, but it remains a generic term for a light beer shandy overseas – so to further complicated things, what may be generic in one country, isn’t necessarily generic in another.

“However a number of companies have acted to take their brands back from the brink of genericisation.”

He said there are steps that a company could take to keep their brands from passing into generic use:

“The fact that your trade mark should be registered is a given.

“But if you need to revive your brand, you could consider adding a description to the name. For example, GIB® are doing this successfully with the description: ‘GIB® plasterboard’.

“A second tactic is to have your trade mark law firm notify media organisations that a particular term is a registered trade mark and if they want to write something like ‘pass the Kleenex®’ when reviewing a sad movie, they should acknowledge the trademark of that particular brand.

“Finally, be vigilant with your brand because names can have immeasurable value and holdmassive commercial advantage when you consider the time and investment that has gone into raising awareness about a particular brand – it’s just that sometimes the marketing department do their job too well,” he said.


About Zone IP

ZONE IP is an intellectual property consultancy providing authoritative advice in trademarks, copyright and branding. ZONE IP is headed by a trade marks lawyer and a former Assistant Commissioner of Patents, Trade Marks and Designs of the Intellectual Property Office of NewZealand (IPONZ).

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