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Use it (properly) or lose it! How to prevent your trade mark from becoming generic

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Building your brand is important. But keep in mind that if your trademark becomes generic, you can no longer rely on the legal protection that registration provides. Tyrone Berger explains.

The main purpose of a trademark is to identify and distinguish one trader’s goods or services from another trader.

However, the underlying justification for trademark protection is to provide consumers with information about the quality of such goods or services, thus reducing the search costs to the consumer.

Therefore, establishing recognition of your trademark with consumers is crucial in a competitive environment — but maintaining its “distinctiveness” is equally important because, once it is lost, your product or service name will no longer be afforded trade mark protection. ‘

For example, if your brand name becomes the name commonly used for that product, and no longer identifies the source of that product, you will lose your trademark forever!

Use your mark properly

You should not only file a trade mark application for your product or service; you also need to develop a trademark strategy to prevent your mark from becoming “genericised”. A proper trademark strategy from the start will save you a great deal of disappointment and expense later on. Therefore, it is important to follow a few simple rules that will protect your trademark and your business.

Do and Don’ts

  • Use your trademark as an adjective, and not as a verb or noun. This will prevent your mark from becoming generic. For example, you can now Hoover a floor or Google a person. But this type of use of language undermines the trademark.
  • Do use your trade mark as an adjective followed by a noun. The noun is the product or service that you are providing. For example, you can purchase Nike® runners and BMW® cars.
  • Don’t use your trademark as a stand-alone verb or noun.
  • Do add the word “brand” next to your trademark, where appropriate, but aim to be consistent with such usage.
  • Do adopt proper trademark notification (i.e. for unregistered marks use “TM” and once your mark is registered with IP Australia, you should adopt the ® symbol).

4 easy steps

1. Assessment

It is important to periodically assess whether your trademarks are in danger of becoming generic. If you have a firm of employees, then it is best to have a policy of trademark usage distributed to all marketing and communication personnel so that they can refer to it in their day-to-day dealings with external parties, and in connection with any new advertising campaigns.

2. Communicating

It is just as important to ensure that proper usage of your trademark is communicated by you to others. You may find media, or other sources such as dictionaries, have started to use your trade mark in a generic manner.

The first step you should do is contact the media source advising them of the particular status of your trade marks. This is a vital step in protecting your trade marks as any generic use of your mark can be relied upon as evidence in support of the mark becoming genericised.

Be proactive about any misuse of your trademark. This should extend to establishing a section on your website that is devoted to proper trade mark usage by others.

3. Registration

Keep in mind that if your trademark becomes generic, you can no longer rely on legal protection that trade mark registration provides. In fact, in most cases, your trade mark registration will be cancelled as you will no longer be able to assert exclusive rights in the trademark. In cases where the trademark remains on the Register, IP Australia will determine whether a trademark owner is required to disclaim a portion of the trademark, thus limiting the scope of protection.

4. Branding and licensing

Brand extension into other goods or services has many benefits, and this includes licensing your trademark for others to use. However, despite your best efforts, you may be running the risk of your trademark becoming generic unless you put in place proper guidelines and usage protocols as discussed above.

Summary

Adopting a trademark strategy to protect your trademarks from becoming genericised will allow you to develop and build your brand in the marketplace, while at the same time, prevent others from infringing your exclusive brand rights via the legal protection that trade mark registration provides.

Tyrone Berger is a registered trade marks attorney. His practice involves trade mark registration and prosecution work, both within Australia and internationally.

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