Trademark Genericide- A price to pay for success

- Shobhit Shukla1
Introduction

"What's in a name? That which we call a rose, by any other name would smell as sweet"
Shakespeare would have acknowledged and appreciated this, but that is definitely not the
case with Trademark Laws around the world. Everything today is in a name, if the name has
acquired some significance as a trademark. The First Earl of Mansfield, William Murray very
accurately observed in Morgan vs. Jones2, that “most of the disputes in the world arise from
words” and such is true in this particular branch of law- Intellectual Property Law.

If you search something online you ‘google it’, If you get injured you apply a ‘band-aid’ on
the wound, if you have a headache you buy an ‘aspirin’ but if you want a packaged water
bottle to drink do you buy a ‘bisleri’?

The company Bisleri sure hopes you don’t and thus is putting in every effort it can to stop
this, as it is very evident from its extensive ad campaign to educate the public about the
correct use of the word ‘Bisleri’ with the advertisement running as ‘Har Maa Jaanti Hai Har
Paani Ki Bottle Bisleri Nahin’(every bottle of water is not a Bisleri).

With this advertisement Bisleri is entering a probable long-term battle to stop the company’s
name, a trademark under the Trade Marks Act, 1999 from becoming a verb. Of the three
examples used above only Google and Band-Aid have survived as trademarks with similar
campaigns, while Aspirin suffered the same fate as Cello tape, Escalator and Heroin.

This is a double- edged sword that becomes a nightmare for many successful corporations.
The success of many prominent organisations may make it seem like small linguistic slip to
confuse their brand names with certain products, and everyone may think that it is a
compliment to the company behind such a successful product – but it could be the sign of a
brand in its death throes.

These popular brands often turn into a generic trademark, a common term used to describe a
product or a service. Sections 9 & 11 of the Trade Marks Act, 19993 clearly states that only
those trademarks which are sufficiently distinguishable from the products of one person
to those of others are worthy of registration. Thus, generic or ‘non-distinguishable’ brands do
1
The author is a second year law student at The Maharashtra National Law University, Mumbai.
2
Jones v. Morgan, 196 Ark. 1153.
3
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999(India).
not qualify for trademark protection. For example, A brand of phones cannot be called
“phones”.

Thus, Bisleri as a brand is trying it’s best at this point of time to educate the public by raising
awareness that ‘Bisleri’ is a registered trademark, so as to not suffer the same fate as other
brands.

The Genericness Doctrine.

A trademark is any word, name, symbol, or device embraced and used by a manufacturer to
clearly differentiate its own goods from those sold by others. Section 36 of the Trademarks
Act, 19994 states that ‘whenever a specific trademark is commonly used by traders to signify
it as a product or service name and not as a source identifier, the trademark is vulnerable to
cancellation.’ This section can be translated to be the Indian adaptation of the Genericness
Doctrine.

This genericness doctrine is placed in effect, to prevent the misuse of the trademark, as
proved in the above-mentioned case, the “intention, or threat to do, anything amounting to
unfair competition or to a wrong against the actual owner” is in such cases the Doctrine
does not takes effect. But generally, when the success of the company in a specific field
with a specific product leads to the ‘monopoly’ of that very company in that product field
such that the name of the product starts being associated with the source identifier.

The doctrine leaves a difficult question untreated. Trademarks started as symbols that unique

producers established to identify their product. In the course of time, however, labels were
used more to classify individual products and differentiate them from other products than
merely to differentiate them from other products of the same manufacturer The commercial
behind Smirnoff vodka is not so much aimed at defining the brand it is at separating it from
other vodkas that are produced by the same company.

The courts have never questioned straight away whether a manufacturer forfeits the rights of

a trademark if it causes customers to associate a brand with a specific product, rather than
itself.

Genericide

4
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999(India).
McCarthy in Trademarks and Unfair Competition5, inter alia, states that “one seller cannot
appropriate a previously used generic name of a thing and claim exclusive rights in it as a
―trademark for that thing. Similarly, if one seller develops trademark rights in a term which
a majority of the relevant public then appropriates as the name of a product, the mark is a
victim of ―genericide and trademark rights may cease.”

The problem of Genericide occurs when a trademark is not descriptive and non-specific or is

used by a single manufacturer for a long period, often because the product was patented.
Bayer Co. v. United Drug Co.6 is the textbook case for companies to understand genericide
and prevent it from happening to them as well. The case of 1921 set the precedent for the
legal norm commonly practiced by courts around the world: When a brand name is
understood by the public to apply generally to a group of products and services rather than to
the actual product or service of a brand, a business might be at risk of losing its mark.7

Cases like Bayer present an uncomfortable choice: either force new producers to spend time
and energy re-educating the public about their product, or take away from the first producer a
mark of identification that he has spent time and energy developing. This dilemma has been
resolved very visibly in favour of the new entrants as is very evident from the cases of
Escalator, Cello tape and Velcro, all of whom lost their identity to genericide in similar ways
and cases and thus has to pay the price for their success and product fame.

Possible Protective measures for Trademark Genericide

Established under Section 83 of The Trade Marks Act, 1999 (Act)8, the Intellectual Property
Appellate Board (IPAB) famously decided in the case of B.V.
ElangoHimachalapathy v/s M/s Rank Xerox Limited & Others9 that “perhaps the respondent
has acted just in time to save its mark losing its life....” implying and stating that where a
corporation or a brand has taken substantial steps to rectify and enforce the improper use of
its trademark term, including the issuing of notices, it shall not be considered to be a generic
term. It is one of the more precarious ways of protecting one’s trademark, but if measures are
taken effectively it can act as one of the protective measures for trademark genericide and
such is the case with famous trademarks like Yahoo, Google and Xerox, who while standing

5
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:11, (5th ed. 2019).
6
Bayer Co. v. United Drug Co., 272 F. 505 (S.N.D.Y. 1921).
7
Whitson Gordon, how a Brand Name becomes generic, Viewed on 29th May, 2020.
<https://www.nytimes.com/2019/06/24/smarter-living/how-a-brand-name-becomes-generic.html>
8
Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999(India).
9
Mr.B.V. Elango vs M/s Rank Xerox Limited IPAB order no. 229/2012 on 21/09/2012
at the pearly gates of genericide adopted the IPAB’s reasoning and thus have worked pro-
actively and successfully towards preventing their trademark from dying of a generic death.
This is still the most viable and popular option left for successful brands is to educate its
audience and the common people about its brand through advertisement and extensive
campaigns. Google asking the media to refrain from using the expression “to google” to
signify a web search and Xerox changing its advertisement in 2003 to ‘Use a Xerox Copier’
and ‘When you use Xerox the same way you use Aspirin, you give us a headache’ while
referring to the aspirin trademark genericide are a few examples of such methods. These
brands may later use in courts these advertisements to prove that they have put in timely and
adequate measures to portray their brand name as adjectives rather than verbs.

In common law, neither the generic nor merely descriptive terms are valid trademarks and the
exclusive use of such terms is not entitled to legal protection. However, protection is awarded
to only those descriptive marks which have acquired secondary significance. Another method
of saving your trademark with timely efforts is by adding the word “Brand” after the
trademark. Companies insert advisory messages aimed at journalists and advertisers, urging
them to use the symbol ® when writing about items such as Kleenex (Kleenex ®), Botox
(BOTOX®), and Tabasco (TABASCO ®). They also put similar advertisements in legal
trade pubs. Which is a more passive-aggressive, but probably more successful, move—since
a fast search through some of the biggest news outlets' archives shows references to certain
items that are notably ®-less.

Apart from these two popular protection methods some more advisory methods include:

1. Trademark owners should stop using the brand name as a verb or noun indicating the
term is generic.
2. In addition to the fancy name, trademark owners should give a new product an
instantly recognizable generic name.
3. Trademark owners should be particularly cautious and should ensure that their logo is
used appropriately.
4. A Trademark Usage Guideline should be established and strictly adhered to.

Preventive and corrective measures, if taken on time, can ensure a long walk for well-known
marks before they wishfully go to their graves. Fame in Intellectual Property Law always
comes at a price and it is left to the brand owner to decide how much he/she is willing to pay.
While it may not be easy to maintain continuous protection for trademarks that are at the
zenith of their fame, it is definitely not impossible.

Conclusion.

The genericness doctrine marks the only place in the law of intellectual property in which
success is punished rather than rewarded.

Often companies while popularizing their product go with advertisements such as, ‘Go Xerox
this’ or ‘Just Yahoo this’, dig their own graves. Still companies do have the option to fight
back and learn from its predecessor’s mistakes. Companies can fight to portray their brand
name as adjectives rather than verbs E.g. Xerox changing its advertisement in 2003 to ‘Use a
Xerox Copier’ and ‘When you use Xerox the same way you use Aspirin, you give us a
headache’.

Bisleri as a company through its extensive advertisement campaign is trying to portray the
brand name as an adjective by educating the masses. It is a paradox that when applying for a
trademark, brands with outlandish names which do not otherwise exist in common language
will have stronger cases. Yet when it comes to defending brands from genericization, this
power can become a vulnerability.

The best way to escape this trap is to pick a name for your brand that is arbitrary in nature
and is not related to your product. E.g. Using a name such as ‘seat’ or ‘seas’ for a medicinal
product is better than using a fancy name such as ‘aspirin’.

Purpose based brands such as Bisleri are the ones that are more likely to fall into this trap
more than any other brand of products.

Every brand maker desires its brand to earn renown. But fame in Intellectual Property always
comes at a price and it is left to the brand owner to decide how much he/she is willing to pay.
While it may not be easy to maintain continuous protection for trademarks that are at the
zenith of their fame, it is definitely not impossible. Preventive and corrective measures, if
taken on time, can ensure a long walk for well-known marks before they wishfully go to their
graves, such is the case with Xerox, Google, Apple and possibly Bisleri.

Ultimately, it does not matter to the common population about the intellectual property
struggles of large corporations, and they’ll probably keep saying “Bisleri” when they really
just want a packaged water bottle. However, those companies have no choice but to fight
hard to make sure the population doesn’t.