Always the real thing? When brands become generic
Some brands are victims of their own success. Coke, for example, simply means cola to a lot of people, and ordering one in any number of bars or restaurants up and down the country could result in you being poured a Pepsi. But how does this come to pass? Why do some brand names end up synonymous for product fields in general, who decides that the (mis)use of a brand name is widespread enough to merit entry into the dictionary, and what legal recourse is there for brands?Oscar Wilde once observed “there is only one thing in the world worse than being talked about, and that is not being talked about”. True, he was commenting on late nineteenth century London society, but could his words be applied to today’s marketing industry, and is there such a thing as too much publicity? Well, for some brands, fame has taken its toll, and the very name they worked so hard to engrain in the public consciousness has escaped their control to take on its own connotations.In I’m Alan Partridge, Steve Coogan’s character famously ranted against “people who say Tannoy when they mean public-address system”, while for most people in the UK ‘Hoover’ is still synonymous with ‘vacuum cleaner’. In fact, take a look at your desk and you’ll probably be surrounded by products which are subject to this phenomenon, from Sellotape to Tipp-Ex to Post-Its and Biros. Each of these brand names trademarked and yet extensively used to denote a product field rather than a specific brand.But is this a good thing for a brand; being identified as so innovative and leading its field that it is absorbed into the language, or is there a possibility of a more negative effect, diluting brand value, eradicating any USP it might have and preventing it from diversifying into other product lines? And what legal recourse is there for brands aiming to avoid the genericisation of their brand name? Well, despite brand owners striving for their proprietary brand names to be instantly recognisable, there is the risk they could become so successful in a product field that trademarks could be challenged on the basis that they become generic and are thus the common name for that type of product, regardless of who manufactures it. There is a paradox here whereby the more successful a brand, the more vulnerable it becomes.Google famously attempted to have its name, and especially the use of it as a verb, kept out of the dictionary despite widespread examples of people ‘googling’ and ‘being googled’. Extensive use of the word to denote the act of using a search engine, whether that be Google’s or otherwise, meant its attempts were in vain with ‘Google’, lowercase and capitalised, recognised as an eponym and making its way into dictionaries in 2003.But who decides when a brand name is used widely enough in a context other than how it was initially intended, and when it should be introduced to a dictionary? John Simpson, chief editor of the Oxford English Dictionary, explained the process behind introducing brand names into the dictionary, saying “in general, our inclusion policy for any word is based on frequency and longevity of use”. He went on the say however that inclusion in the OED “doesn’t imply that they have acquired for legal purposes a non-proprietary or general significance, nor does it imply any other judgement about their legal status”. The dictionary contains entries for around a thousand brand names, “from chemicals such as achromycin, to consumer rewards such as Air Miles, to the Aladdin lamp” according to Simpson. He said: “People encounter these objects in their life, and they need to be registered in the dictionary”.Simpson explained that the OED looks for a word to have reached a level of general currency, “where it is unselfconsciously used with the expectation of being understood”. Sellotape is another example of a brand name that could confidently be used in a game of Scrabble without fear of breaking its rules against the use of proper nouns, with the 70 year-old brand of ‘sticky back plastic’ (as the BBC would call it) appearing capitalised and in lowercase as a verb meaning the act of fixing with Sellotape.Elizabeth Cater, marketing manager at Sellotape, explained how, by becoming “a catch-all term for sticky tape”, it has cemented itself as market leader, “reinforcing its position as the UK’s best known sticky tape brand”. Cater said: “The association between brand and product can be seen as a positive in that it helps Sellotape remain top in the mind of consumers. However, it is important that the brand name remains protected and kept fresh, with new products delivered to the market that reflect the wider brand ethos customers are familiar with.” But how do you protect your brand name? Craig Smith, a solicitor specialising in IP at corporate law firm Biggart Baillie, pointed to ‘escalator’, ‘hoover’ and ‘linoleum’ as examples of trademarks synonymous with all products in their fields, and ‘iPod’, ‘Google’ and ‘Kindle’ as modern day equivalents at risk of going the same way. Smith explained however that “vigilant trademark proprietors can often prevent their trademark from losing its identity”, as seen by ‘Portakabin’, ‘Tannoy’ and ‘Astroturf’ which are “all terms often used in a generic way, but which have successfully retained their trademark status”. Smith, along with Ashley Gribben, trainee solicitor in Biggart Baillie’s corporate department, offered up these top tips for brands looking to avoid losing their identity:
- Be proactive: monitor use of your trademark in the media, trade catalogues and directories and on the internet. When it is misused, send a letter of complaint and keep records of all such complaints and responses
- Use the symbols ™ for unregistered trademarks and ® for registered trademarks. Proprietors and third parties are not legally required to use these symbols; however both symbols act as notice to third parties of your rights
- Only use your trademarks as an adjective (for example, “a LEGO toy”), and never as a noun or verb (for example, “a PERRIER” or “to google”) and ensure your licensees and distributors do the same
- Ensure that licensees use statements such as “TRADE MARK ® is used under licence of [INSERT], the registered proprietor”
- If you think your trade mark is being used inappropriately, seek independent legal advice.