Written by Claire Leonelli and Claire Denoual, Avocats à la Cour
Published on 08.12.2020 - Paperjam
The life of brands is rarely a long, quiet river. Above all, brands are afraid of being forgotten, and so they try to intrude into our daily lives with a great deal of communication. But did you know that they can also be victims of their own success?
When a trademark begins to be used in common parlance to designate a product (or service), marketers see it as the ultimate proof of its success. As is often the case, lawyers disagree, because a trade mark that becomes the common name in the trade for the type of product or service for which it was registered, i.e. a common name, risks being cancelled at the request of any third party who applies for it. If such an application is successful, the trade mark may still be used by the proprietor, but it may also be used by his competitors. The owner of the trademark thus loses his exclusive monopoly on the trademark and can no longer bring infringement proceedings against third parties who usurp it, as from the date of the application for revocation for degeneration. Economically, the sanction is harsh since, in practice, the owner thus allows his rivals to benefit free of charge from the investments he has made to make his trademark popular.
"Piña Colada", "Aspirin", "Kleenex", "Walkman" are some examples of trademarks that have lost their protection.
The fact that a trade mark is used as a common name indicates that it has lost its capacity to differentiate the goods or services of the trade mark owner from those of other undertakings. It therefore no longer fulfils its primary role, which justifies its being granted specific protection.
Fortunately for trade mark owners, it is not enough for the trade mark to be used as a common name for degeneration to occur.
A trademark only ceases to be protected if its owner is the source of its use as a common name.
Frigidaire, Tempo, Thermos, Texto, Zipper, Bic, Post-it, Scotch, Klaxon, Tupperware, Meccano, Pedalo, Bikini, Polaroid, Quiès, Kärcher, Spinning, etc., are all trademarks that are often used generically to designate the type of product in question.
However, the fact that a few third parties use the protected sign in disregard of trademark law does not render the trademark invalid.
Revocation is only possible in situations where it is proven that the generic use of the trademark is the result of negligence or passivity on the part of its owner. If these conditions are not cumulatively met, revocation will not be pronounced. This is the case, for example, of the EU trademark VIAGRA, for which revocation was refused by the EUIPO.
The trade mark owner will not be sanctioned if he demonstrates that he has taken appropriate and reasonable measures to prevent the risk of his trade mark becoming a generic name, but also to stop the identified uses.
This implies active and regular monitoring of the market (newspapers, websites such as blogs, online sales sites, dictionaries, etc.) in order to identify third parties who may be using the trademark in a generic manner. If so, the author or publisher should be given written notice to stop such use as a common name. For example, the author of a blog or the publisher of a collaborative dictionary could usefully be reminded that the term in question is a trade mark which should only be used in reference to genuine goods and not to designate a category of goods. Although it has no legal value on this side of the Atlantic, an invitation to use the symbol ® (for "registered") or the letters "tm" (for "trademark") when quoting the trademark may be useful in reconciling legal issues and marketing imperatives. In the absence of a satisfactory response, legal action should be considered.
Vigilance and reactivity are therefore required!