Genericide: A Threat to Dominant Trademarks

Description

ABSTRACT

Genericide: A Threat to Dominant Trademarks

Simeon Oyakhilome Okoduwa* and Somtochi Unachukwu**

Twitter,in a bid to protect its trademark, stated in its Initial Public Offer filing that ‘There is a risk that the word ‘Tweet’ could become so commonly used that it becomes synonymous with any short comment posted publicly on the internet, and if this happens, we could lose protection of this trademark’. Google also published rules of proper usage of its entire trademark following several suits to make google a generic term. As desirable as it is to make a trademark or product generally well known, the risk of losing its valuable attribute of distinctiveness is very real. This piece attempts to examine how a trademark falls into genericide i.e. the process by which a trademark owner loses its rights of exclusivity to use of the trademark by reason of it having lost its distinctiveness. It then proposes guidelines that may be observed by trademark owners to stem a painful slide into genericide.

INTRODUCTION
Turning a product/trademark into a household name might be the end game for every trademark owner but this could quickly turn into a nightmare when consumers perceive the trademark as the name of the product itself. The trademark could lose its distinctiveness due to its popularity and rival businesses like vultures could then quickly descend on the trademark. Once these rival
businesses convince the courts that the trademark has lost its distinctiveness, they would then become entitled to the use of the trademark, thereby making the trademark a victim of genericide.

Keywords: Trademark, Generic Term, Genericide, Distinctiveness

* Partner, Alliance Law Firm, Lagos Nigeria.
** Associate, Alliance Law Firm, Lagos Nigeria.

THE GRAVITAS REVIEW OF BUSINESS & PROPERTY LAW VOL.10 NO.3