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Don’t use a brand as a generic name

Shall we take an Uber (taxi)? That celebrity definitely used Botox (a toxin to treat facial wrinkles from Allergan Inc)! I gave my daughter a Barbie for her birthday (doll). It’s so easy for these terms to creep in. You come up with a new product or service, it’s a great success and, before you know it, the generic product or service comes to be designated by that brand name. A fine compliment, of course, because you’ve set a proper trend. Some marketeers aim for this quite deliberately; it’s an easy way of communication and consumers then often use it. But this can be hazardous to the very existence of the trademark itself, because a trademark that the trademark proprietor has worked at turning into a generic name can be found to have lapsed. It no longer distinguishes the product or service from an identical service provided by others, but has become synonymous with the product or the service itself. And then you’ve lost control, or at least the trademark can no longer be invoked successfully against third parties. And it’s not just a present-day problem. Do you still remember Xerox, Tupperware (plastic storage containers) and the Walkman? And have you ever used Tipp-Ex (correction fluid)?

Most of all, the trademark proprietor itself absolutely mustn’t use the trademark as a generic name.  Set a good example and always add a clear, generic term. Don’t use “a” or “the” followed by the trademark, but talk about an Uber taxi, a Spa sparkling water or a Tikkie payment request, so you make a distinction between the trademark and the product. The trademark proprietor is also expected to take reasonable steps to combat any generic use of the mark by others. Anyone writing about a cornetto will get a letter from Unilever telling them that this is a trademark. So it’s either a Cornetto ice cream or a cone of another brand, but not ‘a Cornetto’. The trademark proprietor also has to take reasonable steps in licensing arrangements to protect the trademark. The licence agreement should contain suitable terms and the trademark proprietor must ensure (to a reasonable degree) that the licensee actually observes those terms.

Maarten Haak, trademark lawyer

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