GENERICIDE-Untimely Demise of Major Trademarks

Genericide is a legal term which in the literal sense means ‘generification.’ ‘A generic
trademark’ also known as genericized trademark or proprietary eponym, is a trademark or brand
name that owing to its popularity or significance has become the generic name for, or has
become synonymous with a general class of products or services.

Genericide is the historical process whereby an extremely popular brand name or trademark is
transformed through excessive usage into a common noun.

Genericide of a product generally occurs when the product associated with the trademark
enjoyed monopolistic position eventually leading to the trademark’s association with the product
rather than the source of product or when there is a lack of the suitable substitute term for the
trademark in question. It was observed in the case of Hunt Masters Incorporated vs. Landry’s
Seafood Restaurant1 that certain marks which began life as a coined term may become generic
depending upon the consumers understanding of the goods.

One of the earliest uses of the term ‘genericide’ was in the late 1970’s when it was used to
characterize the initial loss of Parker Bros. trademark Monopoly. The decision was overturned in
1984, and Parker Bros. continues to hold trademark for the said board game.2

Genericide can be lethal to a company’s intellectual property portfolio, thus companies should
take precautions right from the beginning in order to ensure that the trademark is used correctly
from the time of its adoption. Google is one such tech giant which is extremely aware and
cautious about the issue. Keeping this in mind they have even published “rules for proper usage”
of all its trademarks. They are against the use of Google term as a verb.

In 2012, the IPAB while deciding B.V. Ilango vs. Rank Xerox Ltd3, held that if a company or
brand had taken extensive measures to rectify the incorrect usage of their trademarked term
including sending cease and desist notices, it will not be considered as generic term. The
companies need to act in a stringent and timely manner in order to protect their trademark from
untimely death. Where a trademark is used generically, a trademark owner may need to take
aggressive measures to retain their exclusive rights to the trademark. Xerox Corporation
attempted to prevent the generization of its core trademark through an extensive public relations
campaign advising consumers to use “Photocopy” instead of “Xerox” documents.

1
Inc. 240 F.3d 251.
2
https://www.nytimes.com/1983/02/23/business/monopoly-loses-its-trademark.html
3
MANU/IC/0110/2012 Mr. B.V. Ilango Himachalapathy, No. 25, Thirumalai Nagar, Korattur, Chennai 600080 vs.
M/s Rank Xerox Limited, Rank Xerox House, 37/41, Mortimer Street, London, N.W. 1. England, Xerox Corporation,
800, Long Ridge Road, P.O. Box 1600, Stamford, Connecticut 06904-1600, United States of America and Registrar
of Trade Marks, Trade Marks Registry, Kolkata (21.09.2012 - IPAB) : MANU/IC/0110/2012
GENERICISM CLASSIFIED

Distinctiveness of a trademark is generally classified into four categories enumerated by the

Second Circuit in Abercrombie and Fitch Co. v Hunting World, Inc. Under the Abercrombie
framework, marks that are either fanciful (invented terms such as EXXON, TYLENOL and
PRIUS) or arbitrary (common words applied in an unfamiliar manner, such as PUMA used for
sporting gear) are the strongest and are viewed as inherently distinctive. Marks that are
suggestive(words that require “imagination, thought and perception to reach a conclusion as to
the nature of goods”, such as “Microsoft” for computer software),are also distinctive. However,
words that are merely descriptive of the goods or services that they name, such as “App Store”
for an online platform for distributing software applications, may not be registered without an
additional showing of secondary meaning (i.e., that the mark has come to identify the source of
the goods or services in the public eye). And, finally, terms that are generic, connoting a general
category to which a particular product belongs (e.g., car, savings bank, lawnmower) but which
give no specific indication of the product’s source, are viewed as not being distinctive but rather
general and receive no trademark protection whatsoever.

Though these rules may, at first glance, appear straightforward, the determination whether a
particular term is generic or descriptive can be a difficult one. In addition, for a mark to be
deemed generic, it must relate to the particular type of good or service for which the mark is
registered. That is, even if a term has a generic meaning in some contexts, it may not be generic
as to the particular good or service for which it acts as a mark.

CHALLENGING MARKS AS GENERIC

A mark may be found to be generic when either at the outset, it is refused registration by the
Patent and Trademark Office (PTO), or after registration, when a once distinctive mark is shown
no longer to identify a source of goods and on that basis is canceled. This latter circumstance is
referred to as “genericide”.

The risk of genericide is highest for products that introduce a new technology to the marketplace,
as the product’s brand is associated with its functionality by the consumers and they begin to use
the brand to describe the general class of products to which it belongs. This risk is particularly
pronounced and often the highest for products that are patented, such that there is only one
product/brand on the market during the period of patent exclusivity. This is the very “trap” into
which Bayer fell with respect to its patented painkiller “aspirin”. During the life of the patent
Bayer made no attempt to establish in the minds of the public some generic name for the product
other than "aspirin." In fact, they welcomed the public acceptance and use of "aspirin" as the
name of the drug. By the time the patent expired, it was too late. "Aspirin “was generic.”

While each of these mechanisms for challenging a mark as generic requires different procedural
steps, the substantive requirements for a finding of genericism do not vary greatly from one such
mechanism to another. In each case, whether a challenged mark is generic or descriptive is a
question of fact. Despite the number of well-known marks that have fallen to genericide, not all
genericism challenges are successful. In some cases, the owner of a challenged mark may show
that the mark, even if it has taken on a generic meaning, is not being used in a generic manner.

The most notable example of this approach arose in the highly-publicized genericism challenge
to the mark Xerox in the case B.V. Ilango vs. Rank Xerox Ltd.4 Xerox was on the verge of
falling prey to genericide as the word Xerox was being used as a common word and in the
minds of the general public became a synonym for photocopying. The applicants case was that
the mark was not generic at its inception but by continued use it had become generic. However,
Xerox strongly retaliated and contended that a mark will not be hit by genericity or become
publici-juris because if the word has a conversational English language equivalent and that non-
commercial casual use will not make the trade mark to publici-juris. Xerox Corporation
prevented their trademarks demise and the Hon’ble court held that Xerox was not a generic term
and the mark is exclusive to the Xerox corporation.

In other cases, the evidence presented does not meet the required standard for showing that a
challenged mark has not taken on generic meaning in the public eye.

This is exactly the reason because of which the Hon’ble High Court in the recent judgement of
Parveen Kumar Jain vs. Rajan Seth & Ors5 held that no one has monopoly over the term chur
chur naan . In this case the plaintiff claimed exclusive rights on ‘Chur Chur Naan’ as he had the
registration for it. However, it was held that no monopoly could be granted to such generic
expressions as there were a large number of outlets which use the name ‘Chur Chur Naan’. The
Delhi High Court further went on to say that there is no doubt that plaintiff is the registered
trademark holder, but, if registrations are wrongly granted or applied for with respect to
completely generic expressions, the Court cannot ignore the generic nature of the marks and
confer monopoly on the same in favour of any party.

AVOIDING GENERICISM

Genericism most often arises from the use of a mark not only by the mark owner (though this is
certainly possible), but also by competitors, consumers, the media, and others. Firms make large
investments in building goodwill for their brand identities, and therefore trademark owners often
go to great lengths to control, or at least influence, third party use of their marks so as to avoid
claims of genericism.

4
MANU/IC/0110/2012 Mr. B.V. Ilango Himachalapathy, No. 25, Thirumalai Nagar, Korattur, Chennai 600080 vs.
M/s Rank Xerox Limited, Rank Xerox House, 37/41, Mortimer Street, London, N.W. 1. England, Xerox Corporation,
800, Long Ridge Road, P.O. Box 1600, Stamford, Connecticut 06904-1600, United States of America and Registrar
of Trade Marks, Trade Marks Registry, Kolkata (21.09.2012 - IPAB) : MANU/IC/0110/2012
5
MANU/DE/1635/2019, Parveen Kumar Jain vs. Rajan Seth and Ors. (08.05.2019 - DELHC)
There are generally three proactive approaches that mark owners have taken to decrease the
likelihood that their marks will become generic6.

First, the mark owners can impose direct contractual obligations on licensed users of the mark.
Thus, in trademark license agreements, it has become increasingly common for mark owners to
prohibit their licensees from using the licensed marks in a manner that might lead to the
consumers using the word in a general manner. These prohibitions often include prohibitions on
use of the mark as a verb (e.g., don’t say “I am going to Xerox these papers”) or as a noun (e.g.,
don’t say “Where is the Xerox of my expense report?”).

Second, mark owners can undertake anti-genericide campaigns directly to the public . This sort
of direct intervention in order to prevent genericism can often be in the form of product
advertising, in which the mark owner reminds consumers that its mark designates a particular
brand of product rather than the product itself. For example, Landes and Posner describe how
General Foods diligently advertised the first widely distributed decaffeinated coffee as “Sanka-
brand decaffeinated coffee” rather than simply “Sanka”.7 General Foods succeeded in preventing
Sanka from becoming a generic term, and in promoting the alternative generic term “decaf”.
Further, Xerox Corporation is perhaps the best known proponent of the direct-to-consumer
counter-measure ad, producing a large quantity of advertising designed not to promote its
products, but to protect its trademark. The corporation used unique techniques in their
advertisements pleading with readers not to use the term XEROX as a synonym for “photocopy.
The mark owner identifies a generic term that can be used instead of the trademark to describe
the function of the product – its genus (e.g., “copy” or “photocopy”) – while reserving the
trademark to identify the source of the product (e.g., a Xerox copier).

The third general approach taken by mark owners to protect their marks from becoming generic
has been to police improper uses of the mark in the marketplace and then request that users cease
and desist those uses, sometimes threatening litigation if they fail to comply to the same.

CONCLUSION

The practice of genericide yields several potential benefits to the market, including the creation
of common terms by which all participants in a market can refer to their products while using
proprietary brands to differentiate themselves and compete with one another. The designation of
these common terms as generic may also have the benefit of preventing others from registering
such terms as trademarks.

Public perception and understanding is the key for determining whether a registered trademark
has lost its source-denoting value and become generic. While evaluating public perception, a

6
Contreras, Jorge L., Sui-Genericide (May 21, 2019)SSRN: https://ssrn.com/abstract=3392043
7
William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective
broad set of factors should be considered including availability of alternative terms, the
trademark owner's use and promotion of the mark .