Genericisation of a trademark occurs when a name becomes commonly used to identify a category of products rather than a specific undertaking. Let us look at the consequences and at how to avoid such a situation.
For a trademark to be validly registered, the legislator requires that it possess so-called "distinctive character". The core element is therefore that the trademark be capable of enabling the relevant public to distinguish the products or services of a given trader from those – identical or similar – offered by a competitor.
When and how does the genericisation of a trademark occur?
Starting from this premise, the genericisation of a trademark is nothing other than the phenomenon that occurs when a trademark, losing its original ability to identify a product as coming from a specific business, itself becomes the common denomination for the category of products it belongs to. Distinctive character, since it depends on the perception of the relevant public, is inherently dynamic and may vary over time as social knowledge evolves.
Well-known examples include the Walkman and the Thermos: following a 2002 decision of the Austrian Supreme Court, the first went from designating a specific product of the Sony group to indicating any portable stereo. The second, originally registered as a trademark by the American Thermos Bottle Company, now simply designates a food container with high thermal insulation.
The phenomenon of genericisation is obviously highly dangerous not only from a legal perspective – it is one of the main causes of forfeiture of the trademark and, with it, of the proprietor's exclusive rights – but especially from a commercial and economic standpoint.
Can genericisation be prevented?
The linguistic phenomenon described above is a necessary but certainly not exclusive condition for genericisation-based forfeiture to occur. It is well established that generalisation must also be brought about by the activity or inactivity of the trademark proprietor. This is confirmed by Article 13 of the Italian Industrial Property Code, which at paragraph 4 provides that:
A trademark is forfeited if, as a result of the activity or inactivity of its proprietor, it has become in trade the generic name of the product or service or has in any event lost its distinctive character.
Notably, since Article 13 IPC refers to distinctive character in general, it also brings within the scope of forfeiture not only word marks but also shape marks (think of the shape of the mocha pot: originally distinctive of the Bialetti brand, it has progressively lost its ability to link the product to a specific business as it has become standardised).
As can be seen from these provisions, genericisation is therefore not an unavoidable phenomenon. In order to prevent it, however, the trademark proprietor must both pay attention to how the trademark is used and constantly monitor the situation so as to react, where necessary, also through judicial action.
The first thing that can be done is to accompany the trademark with the R of "registered trademark (®)". A second strategy that a business can adopt to prevent genericisation, especially when launching new products, is to accompany the trademark with a generic name that consumers can use as an alternative.
Fighting genericisation: activity and inactivity
As Article 13 IPC makes clear, whether a trademark is forfeited for genericisation depends largely on the conduct of the proprietor. While the proprietor's inactivity is easily traced to the failure to adopt the practices mentioned above, it is more complicated to establish when generalisation is attributable to its own activity.
Illustrative here is the Kornspitz case, the trademark under which the Austrian company Backaldrin markets a preparation for making a particular type of bread. The company allowed bakers and distributors to sell the final product using the mark, with the consequence that the public began to perceive the mark not as the registered name of the preparation but as the generic name of the finished product.
The Court of Justice of the European Union clarified that "there is inactivity where the proprietor of the trademark does not adopt the measures which may reasonably be required of it in order to protect the trademark from becoming a generic designation".