General Considerations for Genericide in the European Union (E.U.)

Trademark protection for the 27 member states of the EU are governed by the Community Trademark Regulation (CTMR). This body, founded in 1993, was codified through EC regulations for the purpose of registering community trademarks and offering community protections. “The requirements for obtaining trademark protection through registration in Europe are substantially the same in all Member States and in the Community trademark system.” It is important to note, however, that the conditions that prevent the registration of those trademarks are likewise similar, as “registration is not available for marks which are devoid of distinctive character, which are descriptive of characteristics of the goods or services, such as their nature, quality, or geographical origin, or which are generic.” The last portion of this clause, a mark being generic in nature, disqualifies a mark from being protected as a registered trademark due to the process known as genericide.

There are two ways in which a trademark can succumb to genericide. In the first instance, if an organization uses a trademark widely, and then discontinues the use of the trademark, even if registered, and the trademark sits stagnant for a period of ten years, after that period of time, the trademark is considered to be generic in nature and all associated protections identified with the registration of the trademark lapse. The second main process that may occur, causing the trademark to be identified as generic is if the trademark has never been registered and has not been documented as existing for a given period of time; this latter instance typically only occurs in the case of small business organizations who have ideas regarding the creation of a trademark, but due to the limited use it receives do not register that trademark. The final process that can result in the genericide of a trademark is if a trademark may originally be attributed to a particular organization, but then becomes so widely used that it becomes generic and thus no longer able to be protected; examples of this include bubble wrap, dumpster, ping pong, and many others.

Criteria

Trademark protection is available for a wide variety of signs that are used to distinguish the goods and services of an entity or organization from the goods and services provided by another organization. The trademark may consist of one or more of the following: fanciful or coined marks, arbitrary marks, suggestive marks, or descriptive marks. The mark must be something that makes the product or service unique, standing out from others, while at the same time offering up an association with the product or service and the organization that has created the product or service.

Procedures

To prevent genericide from occurring, there are certain practices that may be undertaken by an organization. First, the trademark should be used as an adjective to a generic term, as in the case of Kleenex tissues. Next, the trademark should never be pluralized, turning the adjective into a noun, e.g. Oreo cookies, never Oreos. A trademark should never be possessive, and all possible efforts should be made to ensure that the noun representing the trademark does not become verbicized, e.g. a person should use a Xerox machine as opposed to xeroxing documents. While it is not up to a company as to whether or not certain of these procedures occur or do not occur, the marketing of the product or service should be geared around working to ensure that the likelihood for the same is diminished.

Liability Fixation and Genericide Rules

To prevent liability, the rules identified in Article 15 of Council Regulation (EC) No 40/94 should be adhered to. To prevent liability, the community trademark cannot be used in a form that alters the character of the mark in the form in which it was registered. It cannot be affixed to goods solely for the purpose of exportation, and it cannot be used without permission of the proprietor. Failure to adhere to any of the aforementioned council regulations will leave the responsible party open to civil liability.

How to Beat Genericide in the EU

The key to beating genericide is not realized within the registration or use of a trademark. On the contrary, the associated service should always hold weight over the brand name. Affording protection to the service makes it so that one cannot produce a knock-off of the brand and then attempt to use the trademark. Google EU is a great example because the program is always changing and always updated legally though multiple patent add-ons that it is quite impossible to create a generic service that does close to what Google does. In parallel, the trademark cannot be used because the service cannot be replicated.