Generic use poses problems for trade marks


THE most valuable tool in marketing a new product is a distinctive and unique trade mark which will fix the product in the public mind. Accordingly, product manufacturers ought to be well pleased when their new brand name catches on and the product is being requested and referred to by that name.

The more famous the brand name, the core the product comes to be habitually described by that trade mark. Thus, consumers shop for a bag of Taytos or for a Thermos flask, buy a Yale lock or use Tippex fluid. In some cases the proper description of the product is unlikely to be known to the public.

How many people refer to Tippex as correcting fluid or Vaseline as petroleum jelly?

While trade marks of this nature are of great commercial value to the product owner, there is a legal downside to this type of generic use.

Under the 1996 Trade Marks Act, which became law on March 16th, 1996, a trade mark will be refused registration if it is considered that, prior to the date of filing, it has "become customary in the current language or established practices of the trade". In other words, if it is used by traders as the name of the product before the date an application to register is filed at the Patents Office.

The logic behind the law in this regard is that the function of a distinctive trade mark is to distinguish one manufacturer's product from another. This will not happen if the trade mark is being used by retailers as a description of goods rather than as a brand name. Traders, therefore, should refer to a ball point pen rather than a Biro.

While ideally retailers should be educated to avoid using trade marks as generic terms, it is very difficult to maintain control in this area. Owners of trade marks which have been used generically by retails should not panic if they have not applied to register their trade mark.

If the owner can show that the trade mark has become well known to the public before the date of filing at the Patents Office, such public recognition will render the trade mark distinctive and will override the problem of the generic use of the mark by the trade prior to filing. In those circumstances the trade mark will be admitted to registration.

Most at risk are trade marks for new products which, although widely used generically by the trade, achieve little widespread public recognition. For example, the brand names for most drugs would not be widely known to the public, although the brand name would be widely used in a generic sense by pharmacists and doctors.

In other words, a patient will know that he is taking an antibiotic but will not necessarily know that he is taking for example, "Augmentin".

A manufacturer's best safeguard, therefore, is to immediately file for trade mark registration once the trade mark has been created. The relatively low cost of obtaining registration is greatly outweighed by the proprietary protection obtained for the brand name.

The 1996 Trade Marks Act greatly widens the scope of trade marks which can be registered. The registration process takes approximately one year. The registration can then be renewed every 10 years on payment of a renewal fee.