Abhilasha Bora
May 15, 2011

Case of Generics: Come of age but yet very naive

Generic marks: Generally     

The generic name of a product or service itself is the very antithesis of the mark. Unlike a trademark, which relates a product to its source, a generic term merely specifies the genus of which the particular product is a species.  

A word/ mark may be classified as generic in the following ways: 

(a) a manufacturer may select a word that is already in common use and apply it to its product according to that common meaning; or 

(b) a manufacturer may invent a word which thereafter enters common usage and becomes generic.     

Reason for not protecting generic marks     

Allowing a generic term to have a trade mark protection would overstep the purposes of trademark law and violate the fundamental concepts of fair competition. If generic names were to become one seller’s exclusive property, competitors would have difficulty informing consumers that they were competitors, because they would be unable without elaborate and possibly confusing paraphrases to give the name or description of the product they were selling. The trade-marking of generic terms would impose excessive costs of information on the competitors and thus, ultimately on consumers and is therefore forbidden. A generic term cannot become a valid trade mark because the first user cannot deprive manufacturers of the product of the right to call an article by its name or to be able to describe it appropriately using the common terms of usage.    

Microsoft v. Apple: Fight- not for a cause but only a means to an end    

On July 17, 2008, Apple, applied for registration of the mark “APP STORE” for the company’s online store where users can buy various software applications for their iPhones, iPads or iPods. After the examination process, the mark was published in the Trademark Official Gazette on January 5, 2010. On July 6, 2010, Microsoft Corporation filed an Opposition with the Trademark Trials and Appeals Board against Apple’s proposed registration of the said mark.  

Microsoft follows its companion against ‘APP STORE’/ ‘APPSTORE’ in the Euro Zone also, where on 12th May 2011, it joined Nokia, HTC and Sony Ericsson in filing filed formal applications for declaration of invalidity in the Community Trade Mark office, the office that oversees trademarks in the Euro Zone.    

The basis of Microsoft’s challenge is that the mark(s) ‘APP STORE’/ ‘APPSTORE’ is generic in nature and therefore, not something to which Apple can claim an exclusive right to use.    

Apple argued that it is entitled to ownership of the ‘APP STORE’ trademark in much the same way Microsoft is allowed to own "Windows" for its operating system.  

When presented with a claim of “genericness,” the pivotal issue for the Court to determine is whether the consumers primarily use or understand the mark sought to be registered, to refer to the broad category or class of goods associated with the proposed trade mark.   

Here, both the companies miss out highlighting the key aspects of genericness, whose sole purpose is put to stop the monopoly enjoyed by the use of the popular trade mark of the other. In an attempt to break the other’s monopoly, especially because of the involvement of few of the largest multinationals of the world, there is a lot of pressure upon the deciding authorities to both interpret and develop the law in this regard.    

Be cautious- The generic magnet s chasing your mark!    

Few prime examples of former trademarks that assumed genericness are ‘ASPIRIN’ and ‘CELLOPHANE’. One of the current trade marks that faced a major risk of falling into generic domain is ‘XEROX’. The common public often uses ‘XEROX’ for the word ‘photocopy’. The mark has been saved by the Company by spending a great deal of advertising money to prevent misuse of its mark both at the end of consumers who use it interchangeably for photocopying and also competitors, whose attempt was always to drag the mark ‘XEROX’ into public domain.    

It is well- understood that a company runs the risk of losing a major percentage of market share merely losing its lead mark. It become even more unfortunate if the same is lost for having become generic, when once it was an invented or coined mark.  

Thus, a checklist for companies while they select their trade marks could be:

  1. Adopt coined/ invented/ distinctive names or words as trade marks
  2. Monitor public usage of your trade mark
  3. Use your trade mark as an adjective- and not as the ‘thing itself’