??BRAND NAMES/TRADEMARKS VS GENERIC TERMS: ARE THEY PROTECTED?
When last did you visit Shoprite (a shopping mall) or go to Silverbird (the Cinema) or eat Indomie (noodles) or Google a word (use a search engine)?
What is a trademark?
A trademark is a sign that is used to identify particular goods and services as those produced or provided by a certain person or business. It helps to distinguish goods and services produced by one business from similar ones provided by another.
For example, ?GT BANK? is a trademark that relates to services (innovative banking and financial services).
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Please find below the legal regime for the protection of Intellectual Property Rights in Nigeria.
Nigerian Copy Right Act, Cap. C 28 Laws of the Federation of Nigeria 2004
Patents and Designs Act, Cap P2, Laws of the Federation of Nigeria 2004;
Trade Marks Act, Cap. T13 Laws of the Federation of Nigeria 2004;
Trade Marks Regulations; and
Merchandise Marks Act Cap. M10 Laws of the Federation of Nigeria 2004
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Distinctive Names
The first asset in any great business is a good name. It should be registered as a trademark. A trademark must be distinctive and capable of distinguishing the goods or services with which it is used.
A trademark is usually a word, but it can also be a logo, an email address (folawusu@yahoo.com, a tag line ?Just Do it?
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Functions of a trademark
They usually; help consumers identify and distinguish products or services; enable companies to differentiate between their products;are a marketing tool and the basis for building a brand image and reputation; may be licensed and provide a direct source of revenue through royalties; are a crucial component of business assets; encourage companies to invest in maintaining or improving quality products; and may be useful for obtaining finance.
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What kind of protection is provided by a trademark?
A trademark owner is given the exclusive rights to use the trademark to identify his goods or services; to prevent others from using and marketing the same or a similar trademark for the same or similar goods or services; to authorize others to use the trademark, (e.g. by franchising or licensing agreements) in exchange for payment.
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How is a trademark protected?
The most common and efficient way of protecting a trademark is to have it registered. Trademarks are territorial rights and unless a given trademark is protected in a specific country, it can be freely used by third parties.
Whether registered or not, a name is a valuable asset that can be protected under the tort of passing off.
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Why protect trademarks?
It provides business people with a remedy against unfair practices of competitors, which aim at causing confusion in the consumers? minds by leading them to believe that they are acquiring the goods or services of the legitimate owner of the trademark, whereas in fact they are acquiring an imitated product, which may be of lower quality.
To protect consumers from unfair and misleading business practices. That is usually employed by some business owners.
A trademark is often the only tangible asset that represents the investments made in the building of a brand. Brand evaluation grows in importance when a business merges with another or where it is sold.
The value of a company may be influenced to some point by the value of their trademarks.
A trademark sometimes becomes so popular that it becomes engrained in the dictionary. It later becomes synonymous with the general class of products themselves. This is how a brand inadvertently contributes a word to the English dictionary!
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Most companies are always trying to make their brands household names.
But when a trade mark is being used as a general term to refer to all goods and services in its class, that trade mark can be said to be a genericized trade mark.
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The Innovation Perspective
I.P. Lawyers would say this process is called ?genericization?. At the very least companies must juggle their quest for brand recognition with the fear of brand dilution, leading to trademark loss or devaluation.
Lawyers vs. Marketers?
Those in marketing want to push the brand name as far out as possible while the trademark lawyers fret about the possibility of the brand losing all trademark significance.
Linguists would use?
?Metonymy? to probably explain this phenomenon. The term ?metonymy? is used when a part is used to refer to the whole.
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Brand Names can be declared Legally Generic after?
A company sues another firm for using its name and the case goes to court and the trademark is said to be genericized even though it was initially distinctive but has changed in meaning to become generic.
Their brand name has become so commonly used to describe a product that the Honourable Court rules that their brand name is too ?generic? to be a trademark.
Meaning that ?any product?, including different product classes, inferior ones etc. can legally use the name.
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A trademark usually becomes ?genericized? when the products or services with which it is associated have acquired substantial?market dominance?or?mind share?to such a point that the primary meaning of the genericized trademark becomes the product or service itself rather than an indication of source for the product or service to such an extent that the public thinks the trademark is the generic name of the product or service. For example the word SPAM has taken on a new meaning as unwanted email. Initially, SPAM?s trademark was owned by Hormel Foods.
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What if trademark protection is lost??
The word enters into ?public domain,? and can be known as a ?genericized trademark,? which means that any ownership rights or legal restrictions on its use has ceased.
Remarkable examples are ?aspirin? a trademark of Bayer, AG, a German corporation, that was lost as a consequence of World War 1 in the US, the UK and France, , Carless, Capel and Leonard invented the trade name ?Petrol? for refined petroleum spirit and ?Heroin? Trademarked by?Friedrich Bayer & co in 1898.
Danger of Genericide
Generic brand names make it difficult for business people to get a remedy against unfair practices of competitors. Thus the legitimate owner may hence suffer from loss of potential customers, as well as harm to his own reputation.
It also makes it difficult to protect consumers from unfair and misleading business practices.
Brand names that become generic are generally less valuable because a trademark is often the only tangible asset that represents the investments made in the building of a brand.
Companies lose the millions of Naira spent to create a brand and market same, when they permit the ?unwanted consequence of making their brand names so popular that they become shorthand for similar products or can even be used to describe just about anything from the popular to the gross.
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Microsoft vs. Apple
Microsoft is challenging the ?App Store? name. Apple first applied for the trademark in 2008, shortly after launching the App Store for the iPhone. Microsoft is seeking to thwart Apple?s claim to the ?App Store? name.
?An ?app store? is an ?app store?,? Russell Pangborn, Microsoft?s associate general counsel, has been quoted as saying. ?Like ?shoe store? or ?toy store?, it is a generic term that is commonly used by companies, governments and individuals that offer apps.?
?The term ?app store? should continue to be available for use by all without fear of reprisal by Apple,?
Meanwhile, Apple is defending its effort to trademark the phrase ?App Store? against a Microsoft challenge, arguing the term is no more generic than the software giant?s trademarked ?Windows.?
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A prominent argument put forward by Apple is that Microsoft should be well aware that the focus in evaluating ?genericness? is done by focusing on the mark?as a whole?and requires:
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?A fact-intensive assessment of the primary significance of the term?to a substantial majority of the relevant public,?
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Protecting your brand from becoming Generic
What can Brand owners do to protect their brand and prevent it from becoming generic? That is a discussion for another day.
Conclusion
In Nigeria you probably won?t lose your trademark because your mark has become generic. However you would probably still suffer the business consequences that would arise from the weakness of your trademarks. ?As a trademark owner, you still have to actively protect your trademarked name. That means using it consistently and protecting it against infringement and from becoming a generic term.
Perhaps our trademark laws need to be amended such that a trademark owner loses his trademark once his trademark becomes generic as generic terms should continue to be available for use by all without fear of reprisal by a trademark owner especially one that made or watched or his trademark become generic.
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Olufola Wusu Esq. ? 2012
Lead Partner Megathos Law Practice
He can be reached at folawusu@yahoo.com
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Copyright ? 2012
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Lead Partner with?Megathos Law Practice
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Okay let?s get started?
Your thoughts anyone?
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by Olufola Wusu Esq
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