Genericization occurs when a brand name becomes common usage, used to define a category of products rather than a specific company. Let us look at the consequences and how it is possible to avoid such a situation.
For a trademark to be validly registered, the legislator requires that it must possess what is known as "distinctive character." It is therefore essential that the trademark be suitable for allowing the consuming public to distinguish the products or services of one entrepreneur from those, identical or similar, offered by a competing entrepreneur.
When and how does the genericization of a trademark occur?
Starting from this premise, trademark genericization (known in Italy as volgarizzazione) is simply the phenomenon that occurs when a mark loses its original capacity to define a product as originating from a specific entrepreneur and becomes the common name for the category of products to which it belongs. The distinctive character of a mark, depending on the perception of the so-called relevant public, is dynamic and can vary not only over time but also as social knowledge changes (for example, common language can be enriched by both neologisms and foreign words that become part of daily use).
Examples of this process include the Walkman and the Thermos: The former, following a 2002 decision by the Austrian Supreme Court (Sony vs. Time Tron Corp), went from designating a specific product of the multinational Sony to indicating any type of portable stereo. Due to the widespread use of the term in common language, it was held that anyone, not just Sony, could use the word "walkman" to describe such a device. The latter, while initially registered as a trademark by the American Thermos Bottle Company, now simply designates a food container with high thermal insulation capabilities (as early as 1962, U.S. courts recognized, referring back to the earlier case of cellophane, how the term "thermos" had become generic and, since it was not being used by competitors for purely deceptive purposes, had in fact lost the distinctive capacity typical of a trademark).
The phenomenon of genericization is obviously extremely dangerous not only from a legal perspective—as it represents one of the main grounds for the revocation of a trademark and consequently the exclusive rights the entrepreneur holds over it—but above all from an economic-commercial one. The fact that a consumer no longer recognizes a distinctive sign as a product originating from its owner, but as a habitual and generalized term for an entire genus of goods, can lead both to a decrease in business volume and, in terms of consumer protection, to potential counterfeiting.
Can trademark genericization be avoided?
The aforementioned linguistic phenomenon is a necessary element but certainly not the exclusive one for revocation due to genericization to occur. It has been held that for this to happen, the generalization must also be caused by the activity or inactivity of the trademark owner. This is confirmed by Art. 13 of the Codice della Proprietà Industriale (CPI – Italian Industrial Property Code), which in paragraph 4 specifically provides that:
A trademark shall be revoked if, due to the activity or inactivity of its owner, it has become the generic name in trade for the product or service or has otherwise lost its distinctive character.
A noteworthy detail is that Art. 13 CPI, by speaking of distinctive character in general, allows for the inclusion in this ground for revocation of not only word marks but also shape marks (in this regard, one need only think of the shape of the moka pot, which, while originally distinctive of the Bialetti brand, became standardized and progressively lost the link between the product and a specific corporate source).
Similarly, at the EU level, Art. 58 of Regulation 2017/1001 on the European Union Trade Mark states:
The rights of the proprietor of the EU trade mark shall be declared to be revoked [...] if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered.
As we can infer from these articles, genericization is therefore not an unstoppable phenomenon. To prevent it, however, the trademark owner must both pay attention to their own use of the mark (they must be the first not to use the mark as a generic name for the product, for example in advertising) and constantly monitor the situation to react, where necessary, even through legal action. To avoid revocation for genericization when a sign begins to enter common language as a generic name for a product, it is fundamental that the trademark owner takes action so that the mark is always recognizable as such.
The first thing that can be done in this sense is to accompany the mark with the "registered trademark" R (®). This should happen both during commercial communications and advertising campaigns, and whenever a third party mentions the mark in its generalized sense. This second scenario may occur particularly if the mark is included in vocabularies and dictionaries, and it is precisely this that Art. 12 of the EU Trade Mark Regulation refers to when it states:
If the reproduction of an EU trade mark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the EU trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark.
This provision was also incorporated into the Italian legal system by Legislative Decree no. 15 of 20/02/2019 and merged into the CPI under Art. 20, paragraph 3-bis.
A second strategy that can be adopted by entrepreneurs to counter genericization, especially when marketing new products, is to accompany the brand name with a generic name that consumers can use as an alternative to the former.
Defending against trademark genericization: activity and inactivity
As can be inferred from Art. 13 CPI, the revocation of a trademark for genericization depends largely on the conduct of the owner. While the "inactivity" of the entrepreneur is more easily linked to the failure to adopt the practices mentioned above, it is more complicated to establish when generalization is attributable to their "activity." According to case law, although this rarely occurs, it generally happens when the entrepreneur decides to use their own trademark as the generic name of the product they market (a practice which, while fruitful from a marketing perspective, undoubtedly exposes the mark to the risk of genericization).
An emblematic case for understanding corporate negligence is "Kornspitz," a trademark under which the Austrian company Backaldrin markets a preparation intended for the production of a particular shape of bread. The main issue in the case was that the company allowed bakers and distributors to sell the final product using the trademark, with the consequence that the public began to perceive the latter not as the registered name of the ingredient, but as the generic name for the finished product.
The Court of Justice of the European Union, to which the case was referred for a preliminary ruling by the Austrian Oberster Patent- und Markensenat (Supreme Patent and Trademark Senate), resolved the issue regarding "inactivity" by specifying that "There is 'inactivity' [...] where the proprietor of the trade mark does not adopt the measures which could reasonably be required of him to protect the trade mark from becoming the generic name." Emphasizing the trademark’s function of indicating origin, the Court further noted regarding the specific case how "a trade mark [becomes] the generic name for the product for which it is registered when it is perceived as such by final consumers, even though the traders, who themselves manufacture the product in question from a raw material supplied by the trademark owner and sell it using the trademark with the owner's authorization, are aware that it is an indication of origin and do not, as a rule, communicate this to final consumers."
Finally, regarding virtuous behavior, there are several cases of companies that have taken action to protect their trademarks: the example of Ferrero stands out, which, as far back as the 1990s, when the famous "Nutella" brand was included in a dictionary as a synonym for "spreadable cream," obtained the inclusion of the ® symbol so that it was clear the term indicated a registered trademark and not a common name (similar steps were taken by Jacuzzi and Dow Italia to protect, respectively, the eponymous line of hydromassage tubs and the "Domopak" brand).