THE WHY AND HOW OF IP – EPISODE 2
TRADEMARKS THAT BECOME GENERIC: TOO HIGH A PRICE FOR SUCCESS
“Can you lend me your BIRO®”, “Bother, I’ve forgotten my THERMOS®”, “Shall we take the ESCALATOR® or the lift?”, “Do you have any CELLOPHANE® to wrap these flowers?”
Who hasn’t at some time or other used these words, without realizing they are protected signs or trademarks?
Although every business dreams of hearing its trademark on everyone’s lips and seeing it displayed everywhere, such a dream can quickly turn into a nightmare if the public mind the trademark becomes a common noun for designating a particular product or service.
This is because Article L.714-6-a of the Intellectual Property Code states that a trademark is liable to invalidity for becoming generic when on account of its owner it has become “the usual designation in trade for the goods or services” it designates.
In other words, the trademark will have lost its distinctive power and will no longer fulfill its function as a trademark, which, precisely, is to serve as a guarantee to consumers of the origin of the goods or services and not to describe a category of goods or services.
However, please be assured, dear trademark owners, the mere fact that use of your trademark has become habitual in business does not suffice for an automatic declaration of its invalidity.
Thus, an action for invalidity through becoming generic must necessarily be brought by a third party (i.e. an individual person or legal entity). It should be noted that that, henceforth, such an action is brought before the National Institute of Industrial Property (INPI).
Previously, only the courts were competent for invalidity actions, and the parties had to show they had a legitimate interest. Today, the plaintiff no longer has to show legitimate interest and appears before the INPI, which can be expected to promote/increase the number of petitions for invalidity…
Thus, according to Article L.L716-5 of the Intellectual Property Code, the INPI has exclusive competence for invalidity actions when they are brought as a main plea, while the court judge has competence for counterclaims.
The plaintiff in the proceedings will have to prove that the trademark has become the usual designation for goods (or for one of the features thereof) and that such use has become widespread without the trademark owner attempting to stop this.
Two cumulative conditions must therefore be met in order for invalidity to be declared.
Very fortunately, the trademark owner is thus not powerless in the face of the familiarity of its trademark which admittedly was desired and sought after, but not to the point of leading to dispossession of its trademark…
It is expected of the owner to play an active role in the defense of its trademark, to be genuinely vigilant, and to intervene to avoid its trademark becoming a common noun.
However, it does not suffice to bring just one action against a competitor, while leaving shops free to use the trademark concerned as a common noun.
The defense policy should be real, sufficient and proportionate and be carried out throughout the lifetime of the trademark.
Thus, the trademark owner should not only conduct a campaign in relation to the public on the Internet, in the press, etc., but also act in all cases to send cease and desist letters to its competitors and warning letters to newspapers, magazines and journals.
Another indispensable action is to set up surveillance and monitoring in the Internet.
It will furthermore not be forgotten to use the trademark in association with symbols such as ® or ™ on packaging or in publicity media, in order to remind the public that the trademark has been registered and to ensure that dictionaries also refer to this if required (especially with the new Art Article L.713-3-4 of the of the French IP Code).
It is furthermore essential to archive over the years all the evidence showing such surveillance and such a proactive approach, attesting to genuinely combatting all risk of its sign becoming generic.
A policy of prevention, but also of repression, must therefore imperatively be set up, so as to not to be reproached for passivity in its trademark becoming generic. There should moreover be no need to point out that the consequences of the loss/lack of value of trademarks can be highly detrimental.
These are minimum recommendations. Our firm is at your disposal to analyze your situation and set up a policy suitable for the defense of your trademarks.
Nawel Triba is an Intellectual property attorney with more than 10 years experience in law firms and IP firms. She joined Santarelli in 2018 and holds a CEIPI in “Trademarks and Designs” from Strasbourg University. Nawel manages worldwide portfolios of IP rights for clients operating in diverse fields of activity.