A trade mark can become a generic term if it is not used properly. Examples of well known generic terms which were originally trade marks are “escalator” and “aspirin”. “Hoover” is a good example of a trade mark which very nearly became a generic term. Collins English Dictionary contains conflicting references in the sense that it identifies “Hoover” as a trade mark but also as a verb defined as “to vacuum-clean (a carpet, furniture, etc)”.
We discovered recently that one of our client’s confectionery trade marks was defined in a dictionary as a descriptive term, even though the trade mark had been registered as a Community trade mark.
Article 10 in Council Regulation (EC) No. 207/2009 states the following in relation to the reproduction of Community trade marks in dictionaries:
“If the reproduction of a Community trade mark in a dictionary, encyclopedia 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 word shall, at the request of the proprietor of the Community 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”.
We drew attention to Article 10 of the Council Regulation and as a result the publisher agreed to correct the dictionary reference.
This is the first occasion in which we invoked Article 10 of the Regulation, an important but we suspect not widely used provision, to help prevent our client’s registered trade mark becoming a generic term.
Norman MacLachlan ©