Success can be a double-edged sword. Reputation is what all brands strive for, but this can come at a price, and brand owners need to take steps to appropriately ringfence this reputation.

If a brand owner does not take the appropriate steps, including protecting and enforcing their trade mark rights, there is a risk of those marks becoming unprotectable generic terms (also known as genericide), subsequently losing their trade mark significance.

What is trade mark genericide?

Trade mark ‘genericide’ refers to a trade mark that, whilst once legally protected, has lost any such legal protection (due to the inactivity and lack of proactivity by the trade mark owner) and has become a generic term within the trade. Essentially, the brand becomes synonymous with the product – disaster for the brand owner!

Brands that sell patent protected products often succumb to genericide. This is because the patent protection enjoyed by the owner gives them the  right to prevent third parties from selling the patented product (usually for a period of up to 20 years). As such, without careful policing and enforcement, the brand under which the product is sold can become generic.

If you file a UK trade mark application after your brand has succumbed to genericide, the UK Examiner or a third party reserves the right to block your application. This is covered by Section 3(1)(d) of the UK Trade Marks Act 1994, as follows:

“The following shall not be registered—

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”
Likewise, even if you have registered trade mark protection, a third party could seek to invalidate those rights should your brand succumb to genericide (or, indeed, if it can be shown that the brand was already generic at the time of filing). This is covered by Section 46(1)(c) and Section 47(1) of the UK Trade Marks Act 1994, as follows:

Section 46(1)(c):

“The registration of a trade mark may be revoked on any of the following grounds—
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered.”

Section 47(1):

“The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).”

The ‘genericide graveyard’

Several brands have succumbed to genericide (at least in some territories), essentially being victims of their own success and inactivity.

The following are examples of such brands:

Aspirin

Bayer AG, a German pharmaceutical company, began studying acetylsalicylic acid as a less-irritating replacement medication for common salicylate medicines in the late 1800’s. 
By 1899, “Aspirin” was born. The word “Aspirin” is a portmanteau word made up for the prefix “aspir”, a reference to acetyl and spiraea (the meadowsweet plant genus from which the acetylsalicylic acid was originally derived), and the common chemical suffix “in”.

Once Bayer’s patent rights expired, the brand name “Aspirin” succumbed to genericide in several territories (including the USA), although Bayer does still hold trade mark rights directed towards the word “Aspirin” in other territories.

Escalator

The Escalator was invented in 1897 and manufactured by Otis Elevator Company. The word comes from the Latin word for stairs (scala). Whilst the owner had exclusive trade mark rights, as a consequence of inaction and inadequate policing, the term was declared generic by the US Trade Mark Office in 1950.

Trampoline

The first modern trampoline was built by George Nissen and Larry Griswold in 1936. The name “trampoline” derives from the Spanish word for diving board, “trampolin”.

The original generic term for trampoline was “rebound tumbler”, although this has long been displaced by the word trampoline, which used to enjoy exclusive trade mark rights.

Ongoing battle to prevent genericide

Several brands continue to battle against the tide of genericide, often being used as generic terms despite enjoying exclusive trade mark rights. The following are examples of such brands:

Portakabin

The Shepherd Building Group, founded in York in 1890, own the trade mark rights for the brand ‘Portakabin’. 
The company has struggled with others using ‘Portakabin’ generically. A section of their website is dedicated to discussion of their exclusive trade mark rights, and attempts to educate their consumers about the potential misuse of their brand.

Tupperware

Founded in 1946 by Earl Tupper, Tupperware soon became a global household name renowned for their airtight food storage containers.

As a consequence of their extraordinary success, the Tupperware brand has become increasingly generic over the years, with consumers frequently describing any plastic containers as ‘Tupperware’, despite this being a registered brand.

The company filed for bankruptcy in the USA back in September 2024 amid financial trouble, citing declining sales and increased competition as contributory factors. Indeed, the company’s problems have likely been compounded by the weakening of their brand, diminishing their ability to differentiate themselves in the marketplace in the face of cheap dupes.

Velcro

Velcro IP Holdings LLC own the trade mark rights for Velcro, including for “hook and loop” fasteners (the generic name for Velcro).

Nonetheless, Velcro have had issues with other companies using ‘Velcro’ generically. Indeed, in 2017, the company released a "Don't Say Velcro" campaign in an attempt to keep their brand name distinctive from other hook-and-loop fasteners and discourage the generic use of Velcro.

Top tips

The question is, how can you safeguard your own brand to prevent it from falling into the genericide trap? Below are some recommendations to prevent this eventuality. 

File to register your trade marks

It is imperative that your brand is protected by a registered trade mark. Registered trade mark protection gives you the scope to prevent others from using your brand (or a similar one). As is the case with all forms of IP, being proactive at the outset is crucial.

Enforce your trade marks and monitor third party use

It is not sufficient to simply have your registered trade mark sitting on the trade mark register – it is imperative that it is enforced as and when necessary.

Inaction when third parties infringe upon your trade mark rights will only serve to undermine any such rights. When you identify a third party infringing upon your trade mark rights, be sure to make them aware of this (after consulting with a Trade Mark Attorney, of course).

Educate 

It is important to educate your customers, employees, and anyone within your supply chain as to the correct usage of the brand.

This could, for example, take the form of a document discussing good ‘use’ practices (see below) to be distributed externally and internally.

Engage in good ‘use’ practices

It is important to use your brand in a trade mark manner to prevent it becoming synonymous with the product itself.

Good ‘use’ practices include:

• Using the ® symbol next to any registered trade marks, serving as a clear indication to third parties of your registered trade mark rights. If you do not have registered trade marks rights, use the ‘TM’ symbol instead (you cannot use the ® symbol if you do not have any registered trade mark rights).
• Using your brand as a noun, not as a verb, and distinguishing it with the use of capital letters.
• Using your brand as an adjective alongside the generic term, for example, “TUPPERWARE plastic food containers”. If the generic term is complicated, think of a simpler one; or, if your product is new, devise appropriate generic wording.

Keep records of your brand usage

It is good practice to keep records of your brand usage, including marketing materials, advertising expenditure and turnover records. This type of information is often required when seeking to enforce trade mark rights.
Should you require any assistance with your brand protection needs, please do not hesitate to get in touch.

Investing in the Future of Your Brand

Protecting your brand is an investment in the long-term success of your business. By taking proactive steps to safeguard your intellectual property, you can build a stronger, more resilient brand that thrives in the global marketplace.

Contact Secerna LLP today for a free consultation and learn how we can help you protect your valuable brand assets.