In this opinion piece, attorney Jeanine Coetzer argues that proper trademark use and enforcement are essential to retaining the value and strength of a company’s brands

Let’s say ‘Zoom’ becomes a synonym for conducting online video meetings, regardless of the App used, or – worse – the word becomes a verb. Thus, Zoom will lose its distinctiveness. It will become a generic trademark, and its owners will not be able to stop others from using Zoom to refer to online conferencing.

This would not be the first time such a thing has happened. Over the years, many brands have come to realise the adverse consequences of a trademark that is too successful.

Once-distinctive trademarks, such as Asprin, Escalator and Thermos, have become generic marks that are descriptive of the relevant goods or services or generally define a class of goods or services, rather than identify the goods or services of a particular trader. This process is known as trademark genericide.

Unpacking the Trademark

A trademark is any word, name, sign, symbol, logo, container, shape, pattern/ornamentation or colour – or a combination of any of these – which traders use to distinguish their products or services from the products or services of their competitors. A trademark is an effective communication tool and has the potential to convey intellectual and emotional attributes and messages about a brand and its reputation, products and services.

The basic functions of a trademark are to serve as a badge of origin – or as a source identifier – and to distinguish the goods or services of one business from the same or similar goods or services of another business in the course of trade.

The law protects trademarks that achieve this by allowing them to be registered and exclusively used by the trademark owner. Thus, terms that are deemed generic are not entitled to trademark protection, because they are in the public domain.

Here is an example: consumers have learned to identify types of French fry based on the restaurant they come from. This is because the essential product, the French fry, already existed, so companies had to apply their trademark to a product already in existence.

How Genericide Happens

More often than not, genericide takes place in the realm of invented products or a new type of product or service. An often strong, distinctive, nongeneric and valid trademark enters common parlance and gradually loses its distinctiveness over time, to the point where it becomes the common name of the relevant product or service, widely used by consumers and even by competitors.

This ‘death by nouning’ or ‘death by verbing’ phenomenon occurs when the public no longer perceives the trademarked term as an indicator of source, but as a description for a class of products or services. Think of Google, Tweet, Photoshop and Facetime.

When this happens, the mark can no longer serve its distinguishing function, and the company runs the risk of its brand name becoming so commonly used that a judge rules it too “generic” to be a trademark. Goodbye protected status!

In South Africa, for example, the Supreme Court of Appeal found that Liquorice Allsorts had become the generic name for a particular liquorice confectionery product. The benchmark judgment was handed down in 2000 in Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and the Registrar of Trade Marks.

Generally, the objective is for goods or services to become something everyone wants, and for their trademark to become a household brand. But there is a fine line between having your brand as a ‘household name’ and it being just another house.

What Brand Owners Should Do

Astute brand owners should adopt a strict protocol for the consistent proper usage of their trademarks.

To begin with, a business should use its trademarks in a way that emphasises their trademark significance – that is, not in a generic sense – as a way to refer to the type of goods or services offered.

A visible method that can be employed in written advertisements and advertising materials (website and online marketing) is to use the ® symbol (if it is registered) or the ™ symbol (if it is unregistered) to signify that the mark is a proprietary brand.

Preferred trademark use should be as an adjective, followed by the general or common name of the product or service, as in Photoshop photo-editing software, Google search engine, BMW vehicle, Nike sneakers, and so on.

Online monitoring is another tool that can be employed in the enforcement efforts to retain exclusivity of trademarks.

Establishing trademark recognition with consumers and maintaining that distinctiveness in the marketplace require concerted and consistent effort, as well as strategic planning. No matter the size of a company, proper trademark use and enforcement are essential to retaining the value and strength of a business’s brand or brands.

Coetzer, who holds an LLB (cum laude) degree from the University of Pretoria, is an associate attorney at law firm Spoor & Fisher South Africa