Genericide Survey Highlights Differences in Cancellation Actions Worldwide

Published: March 2, 2022

Carlos Eduardo Neves de Carvalho

Carlos Eduardo Neves de Carvalho São Paulo, Brazil Subcommittee Chair, Famous and Well-Known Marks Committee—Genericide Group

Kelly Thompson Adams & Adams Pretoria, South Africa Vice Chair, Famous and Well-Known Marks Committee

Li Bin Wanhuida Intellectual Property Beijing, China Legislation and Regulation Committee (previously served on the Famous and Well-Known Marks Committee)

INTA has unveiled the results of a global genericide survey that inform brand owners and trademark practitioners of the specific measures that must be adopted to avoid genericide in various jurisdictions. The Famous and Well-Known Marks Committee conducted the genericide survey during the 2018‒ 2019 and 2020‒2021 Committee Terms. It covers 84 jurisdictions around the world. The main findings of the survey are discussed here.

“Trademark genericide” or “vulgarization of a trademark” occurs when a trademark becomes so famous and popular that the public identifies the trademark with a generic name of products or services rather than the trademark itself (source of origin of a particular product/service).

In most jurisdictions, trademark offices make available cancellation actions due to genericide, and brand owners can take similar actions to prevent their trademarks from becoming generic.

Are cancellation actions due to genericide possible, and what are the requirements for cancellation?

For Europe and Central Asia, where the survey was conducted in 31 jurisdictions, cancellation actions are possible at the trademark office in all but three countries: Croatia, Montenegro, and Uzbekistan.

For the European Union countries surveyed, they have adapted their trademark laws as a result of the emergence of European Trademark Directive – Community Directive No. 89/104/EEC and current Article 58.1.b of EU Regulation 2017/1001. Cancellation actions are available if “after the date on which [the trademark] was registered, as a result of acts or inactivity of the proprietor, it has become the common name of a product or service in respect of which it is registered.”

In East Asia and the Pacific, where the survey was conducted in 17 jurisdictions, 12 jurisdictions make available cancellation due to genericide. Regarding the requirements, 10 jurisdictions have legal provisions establishing the criteria for judging a trademark as a generic term.

In Latin America and the Caribbean, where the survey was conducted in 22 jurisdictions, half of the countries do not have specific laws related to genericide. In this case, the registration will still be valid, although the trademark has become non-distinctive.

In the Middle East, Africa, and South Asia, of the 12 jurisdictions surveyed, cancellation due to genericide is possible in all countries except Nepal, Uganda, and the United Arab Emirates.

On the African continent, most of the countries surveyed have only general provisions regarding distinctiveness, which can be used, at least in theory. Only Botswana, Ghana, and South Africa have specific provisions relating to the removal of marks that have become common names or customary in the trade.

FRENCH PRESS is an example of a trademark canceled due to genericide in Canada.

Lastly, in the United States, cancellation actions are available at the U.S. Trademark Trial and Appeal Board (TTAB) of the USPTO, or in a civil lawsuit to seek cancellation of the plaintiff’s trademark registration in a counterclaim based on genericide. In this case, the defendant would have the burden of proving that the mark has become generic. The requirements are established under Section 14 of the Trademark Act, under U.S. Code Title 15, Section 1064.

What are the criteria—objective or subjective—applied to cancellation actions?

In many jurisdictions, the criteria are either (i) objective, primarily the loss of distinctive character of a trademark in the perception of the relevant public; or (ii) subjective, with cancellation dependent upon the activity or inactivity of the trademark owner. Some countries apply both objective and subjective criteria. However, in all countries, if a trademark is deemed to be generic before an application is filed, it may not be registered.

Has a famous mark been canceled due to genericide?

In 15 jurisdictions in Central Asia and Europe, famous trademarks canceled due to genericide include WALKMAN in Austria; GRAMMOFON and VASELINE in Denmark; NYLON, TERMOS, and VASELINE in Norway; THERMOS, VASELINE, and YELLOW PAGES in Russia; and many others.

For the East Asia and Pacific jurisdictions surveyed, trademarks were canceled due to genericide in five jurisdictions. Examples include YOU-PAN mark (YOU PAN) in China, UDONSUKI in Japan. SAR SEE SWEE in Malaysia, MAGLEV in Singapore, and CAFFE LATTE in South Korea.

For Latin America and the Caribbean, famous trademarks were canceled due to genericide in eight jurisdictions. Among those canceled include CANOLA and CARTONPLAST in Colombia and PITA and PRICE VECTOR in Costa Rica.

For the Middle East, Africa, and South Asia countries, LEMON PUFF was canceled in Pakistan and LIQUORICE ALLSORTS in Sri Lanka.

FRENCH PRESS is an example of a trademark canceled due to genericide in Canada.

In the United States, since the beginning of the last century, many famous marks were held to be generic, and some of them (followed by the year they were held to be generic) are ASPIRIN (1921), CELLOPHANE (1936), SHREDDED WHEAT (1938), ESCALATOR (1950), THERMOS (1963), and, more recently, PILATES (2000).

Are actions to prevent genericide common?

The survey results confirm that it is common for owners of famous marks to take actions to avoid trademark genericide in the majority of jurisdictions worldwide.

The most common actions are (i) market surveillance, (ii) objecting to third-party misuse, (iii) public awareness campaigns, (iv) ensuring use of the mark as an adjective and never as a noun or a verb, (v) using the ™ and ® symbols, and (vi) establishing clear guidelines for the use of a mark. Also considered important in the case of new products on the market is to provide the public with an appropriate generic/descriptive name to use and to make it clear that the trademark is a brand.

Can there be a recapture of a trademark?

In most of the countries surveyed, the recapture of a trademark that had become generic eventually could happen through the secondary meaning. Respondents noted that evidence of acquired distinctiveness would be needed for a fresh application of the mark.

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.

© 2022 International Trademark Association