Patent and other IP infringement in South Africa: When can you threaten legal action?
June 5, 2017
August 5, 2017

Is the Google trade mark unprotectable?

Ever said, “I googled it” or “Check Google”? The verb ‘to google’, meaning to ‘look up or search online or on the internet’ – on Google itself, or elsewhere, using other search engines – has become widespread in our daily lexicon. But has this rendered the GOOGLE trademark unprotectable?

“No,” said the Ninth Circuit (USA) in the case of Elliott v. Google, Inc., 16 May 2017, during which Google’s trademark status was unsuccessfully challenged.

What’s behind the argument? Well, the plaintiffs in Elliott v. Google, Inc., filed a lawsuit to cancel the GOOGLE trademark under the Lanham Act (USA trademark legislation), arguing that because the word “google” is now universally understood to describe the act of internet searching, it was “generic” and should no longer be afforded trade mark protection.

This phenomenon is called ‘genericide’; that is, when the public appropriates a trade mark and uses it as a generic name or description for particular types of goods or services, regardless of who makes the product or provides the service. Look at these common examples:

  • aspirin
  • cellophane
  • thermos
  • xerox
  • cutex
  • hoover
  • dumpster
  • sellotape
  • trampoline

Once trade marks, the above names or words lost their protected status in terms of trade mark law by becoming generic. The terms ceased to be a source identifier or signs that distinguished their owners’ goods and/or services from other traders, and became ‘just another word’ in the English lexicon, used by the consuming public and commercial competitors.

What happened then? Well, Jeep and Band-Aid were inspired to protect their trade marks and make sure that they are enforceable, so each ran an aggressive ad campaign to educate consumers:

  • “They [Chrysler LLC] invented “SUV” because they can’t call them Jeep®.”
  • “I am stuck on Band-Aid’s brand cause Band-Aid’s stuck on me.”

The South African Trade Marks Act contains provisions which deals with exactly this scenario (genericide) in sections 10(1) and (2), which reads as follows –

10 Unregistrable trade marks
The following trade marks shall not be registered as trade marks, or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register:
(1) A mark which does not constitute a trade mark;
(2) a mark which –
(a) is not capable of distinguishing within the meaning of section 9;
(b) consists exclusively of a sign or an indication which may serve, in trade, to designate the kind,…intended purpose…     or other characteristics of the goods or services… or
(c) consists exclusively of a sign or an indication which has become customary in the current language or in the 
bona fide and established practices of the trade;..’

All, or any of, these subsections could be used to justify the refusal or removal of a mark because of genericide.

Google retains its iconic trade mark

Back to Google, it was successfully argued that the defendant owns a trade mark for the search engine, not the act of searching. The fact that people might offer ‘to FedEx a package’ doesn’t mean consumers can’t understand the difference between FedEx and UPS, Google explained, and the same is true for search engines.

Bottom line? Even though ‘google’ has become synonymous with searching the internet and remains a verb for many, Google still retains its trade mark, GOOGLE.

In Elliott v. Google, Inc., the Ninth Circuit cautioned that “the mere fact that the public sometimes uses a trade mark as a name for a unique product does not immediately render the mark generic … Instead, a trade mark only becomes generic when the ‘primary significance of the registered mark to the relevant public’ is or becomes the name for a particular type of good or service irrespective of its source.”

So, for now at least, Google’s trade mark is safe. But what does this mean to you?

Avoiding trademark genericide

If you’re a trademark owner, here are 10 tips for protecting your trade marks:

  1. Always present the trade mark in the proper form, i.e., in the proper font/stylisation, or all capital letters, and with the appropriate trade mark symbol (e.g., ® or ™).
  2. Use the generic name of the goods with the trade mark (e.g. Q-Tips cotton swabs).
  3. Use the trade mark as an adjective (e.g. KLEENEX tissues).
  4. Do not use the trade mark as a noun (e.g.  Get me some kleenex).
  5. Do not use the trade mark in the plural (incorrect: buy two DR. PEPPERS; correct: buy two DR. PEPPER soda beverages).
  6. Do not abbreviate or alter the trade mark (use H&M and not H and M).
  7. Make it clear to your consumer public and competitors that the trademark represents the brand and not the product itself.
  8. Educate companies and the public about the proper use of the trademark.
  9. Monitor the use of the trademark, or hire someone to do this for you.
  10. Enforce your trademark rights with legal help if necessary.

Do not let your trademark become a victim of its own success. Registered trade marks are often the most valuable assets of a business, so it’s wise to enforce your trade mark rights consistently and regularly.

The content of this newsletter is intended to provide a general guide to the subject matter. It does not necessarily cover every aspect related to the topic. Specialist advice should be pursued for your specific needs and circumstances.

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