NAMING A NEW AND UNIQUE THING
“If a man (or woman) invents a new article and protects it by a patent, then during the term of the patent, they will of course have a legal monopoly, but when the patent expires all the world may make the article, and if they may make the article they may say that they are making the article, and for that purpose use the name which the patentee has attached to it during the time when he had the legal monopoly of the manufacture.” - Lord Davey in the case of Cellular Clothing Co v Maxton & Murray.
The primary purpose of a trade mark is to act as a badge of origin by distinguishing the goods of the proprietor from the same kind of goods made by others in the course of trade. In the event that a trade name becomes known to the consumer as being the name of the product itself, as opposed to identifying its source, the trade mark loses its essential distinctive character and hence its ability to act as a trade mark. This is known as “genericide” and has happened time and time again over the course of history. A few examples of trade marks which became known to the public as being the name of the product and so lost their distinctiveness are:
- Aspirin, previously known as acetylsalicylic acid, was the subject of a trade mark registration in the name of Bayer AG, however it quickly became known to the world as a pain and fever relieving tablet, which meant it wasn’t distinguished from the same kind of tablets produced by other pharmaceutical companies;
- Escalator, created in 1900 by Otis Elevator Co., the word was invented by the company from the Latin work scala which means steps. The U.S. Patent Office later held that the mark cannot function as a trade mark since Otis Elevator Co. itself used the mark as a generic descriptive name in its patents;
- App Store, previously the subject of a US registered trade mark in the name of Apple Inc., and now used descriptively by many technology companies, such as Amazon’s use of the term “Appstore for Amazon”.
Examples of trade marks registered internationally, that could be facing the same fate as the above genericized trade marks (i.e. because they have been used generically), are BUBBLE WRAP, BAND-AID, HOOVER, HULA-HOOP, JACUZZI, MEMORY STICK and ONESIES. Do marks such as these indicate the source of the goods, or merely the physical identity of a type of product?
When faced with naming a new and unique product, it is advisable to give the product a descriptive name or phrase by which the public can identify it, as well as an inventive trade mark (e.g. ASPIRIN – Bayer’s pain-relieving tablet), and from inception proactively use that trade mark “as a trade mark”, e.g. by using it in conjunction with a descriptive term denoting the physical character and attributes of the product to which the trade mark is applied.