The Subtle Danger in Big Trademarks
Could a trademark ever become too big for its own good? Yes. Well that depends largely on the territory of the trademark (trademarks are territorial rights). So a trademark in Nigeria could probably never become too big for it’s own good but in the United States and Europe, yeah, that’s a thing. Is it a good thing? I think it is and I’ll try to explain why I think it’s a good thing shortly.
Before I go into what it means for a trademark to become ‘too big’ in my opinion, I will explain what it means for a trademark to be big. And what is it for a trademark to be big? There is such a thing as well-known trademarks in the IP space, and well-known trademarks enjoy a lot of benefits over other not-so-well-known trademarks. One of the benefits well-known trademarks have is that, in some countries, even when a certain mark is not registered but it has gained enough reputation i.e is well known, such mark is still protected. Another major benefit for well-known marks is that Article 6bis of the Paris Convention basically states that no member state of the convention should refuse to register a mark which is already well-known in another member state. Remember the Tesla story in 2014? No? Okay. Basically, Tesla was about to introduce its products in the Chinese market but first, they needed to register their TESLA mark but they then found out that someone else had registered the mark, without use, in 2006 which was three years after Tesla first registered in the United States. Eventually, using Article 6bis, the United States was able to get China to invalidate the registration. So yeah, when you’re big, you’re big.
So what then is too big? Section 14(3) of the Lanham Act of the United States provides that a mark can be cancelled at any time such mark becomes the “generic name for the goods or services, or a portion thereof, for which it is registered”. What does being generic mean in respect to a registered mark? Elliott v. Google where the plaintiff filed to have the defendants trademark, Google, cancelled because according to them, it was common knowledge that the act of internet searching was now often referred to as ‘Googling’. Which is quite true because I’m pretty sure that everyone reading this has once said or hear someone say “Let me google this”, or “I’m going to google that”. This is of course because Google is undoubtedly the most popular internet search engine all around the world (except maybe in China?). So is Section 14 of the Lanham Act trying to say “Okay, you can have your trademark but make sure you don’t get too popular”? No. Not at all.
In the same case of Elliott v. Google, the Appeal Court, ruling in favour of Google, held that using the word ‘google’ as a verb to mean to search the internet does not automatically constitute generic use. Also, a claim of must be made in relation to a particular good or service. Moreover, when Congress amended the Lanham Act it explained that, “A trademark can serve a dual function—that of [naming] a product while at the same time indicating its source. Admittedly, if a product is unique, it is more likely that the trademark adopted and used to identify that product will be used as if it were the identifying name of that product. But this is not conclusive of whether the mark is generic.” What all of this basically means is that a verb use of the mark does not make it generic and until the act of using other search engines, other than Google, to search the internet is referred to as googling or other search engines begin to refer to themselves as googles, the mark is not generic. And you may think that is impossible but it has, as a matter of fact happened before to THERMOS, ASPIRIN and CELLOPHANE.
Back to Nigeria, according to the Trademark Act of 1960 (why we still apply laws from 1960 to regulate trademarks in 2020 is a question for another day), a mark can only be invalidated if it was registered on grounds of fraud or where such trademark is deceptive, scandalous, contrary to law or public morality. Why do I think our trademark laws need to be amended and should include a provision that a mark can be invalidated when it becomes generic? That’s pretty simple as I think it’s the same reason the whole concept of genericness is a good thing. A trademark should be distinctive and not descriptive. When a mark, any mark grows beyond that and gets to a point where it is used to refer to other products, which should ordinarily have their own marks, that mark is no longer distinctive.
In a Nigeria where such provision was in our trademark laws, we might have seen suits to challenge the validity of marks such as Close-Up, or NEPA – if it was a mark. And although I do not know, as a matter of fact, if these challenges would be successful or not, I know that they will be good for the health of our trademark laws and put it in a Tyson Fury shape as opposed to the Wilder shape -after his fight with Fury- it currently is in (this reference is based on their second fight only).
Author: Joshua Solomon