Famous and Well-Known Marks Committee Publishes Guidelines for Best Practices to Avoid Genericide

Genericide of a trademark entails harmful consequences for its owner, so it is essential to take all measures within our reach to avoid it. Here, the Genericide Subcommittee of the Famous and Well-Known Marks Committee expands the guidelines published by this Committee on May 1, 2019, with additional tips to prevent trademarks from becoming generic or contributing to genericide, as follows:

1. Adopt a proper license policy | Ensure that the license agreement includes the requirement that the licensee adheres strictly to the brand guidelines. If the licensing requirements are too strict or not feasible from a business perspective, this can encourage or result in use of the mark as a generic term.
2. Do not ignore small markets | Take into account the geographical connection between markets. For example, in the European Union, if a mark becomes generic in one of the EU countries, it could be canceled for the whole EU.
3. Pay special attention to the use of the mark in countries with different alphabets | Adopt rules for the use of the mark in countries that use non-Latin-based alphabets—use of the mark in its original alphabet vs. transliteration. Put special effort into locating generic use of the mark in the local alphabet as early as possible, as it can be extremely detrimental.
4. Attach the mark to the goods, if possible | Attaching the mark to the goods it represents, especially if accompanied by the ® sign, would ensure that the mark is perceived as a mark and not as a descriptor.
5. Prevent genericide as a consequence of the activity or inactivity of the trademark holder | In some jurisdictions, the loss of distinctive character of a trademark may support the revocation thereof only when it is a consequence of the proprietor’s action or inaction. Actions that could contribute to the loss of distinctive character could be usage of the mark in a generic way by its holder. Inactions that could lead to the loss of distinctive character may include not informing customers that the sign is a registered trademark or not taking actions against generic use infringement of the mark.
6. Define the relevant public | Becoming a common name is always judged from the point of view of the relevant public. Therefore, the correct definition of the relevant consumers is extremely important. This would allow directing your efforts to the correct target.

Access the full guidelines.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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