“Genericide”: How to survive it - the Google Case02 novembre 2017 -
di Federica Pezza
The term “genericide” refers in the practice to those situations where a trademark is transformed through popular usage into a common noun. In other words, the mark stops identifying a particular trademark owner and it is used, instead, to describe the product/service itself. Take your Biro, for example, or your Kleenex: there was a time these terms were more than a common ballpoint pen and ordinary tissues. They represented a valuable asset.
This scenario, regulated under 15 U.S.C. § 1064(3) of the Lenham Act in the US and under Art.20 of the EU Directive , is particularly dangerous for the right holder, as it results in the indefensibility of its mark.
The case at stake is just the latest example of the issue.
We are in the US and, as the best of traditions, the main characters are Google, somebody wanting to strip it of its trademarks and (of course) the average consumer. Namely, the two defendants, Chris Gillespie and David Elliot, had bought more than 700 internet domain names incorporating the word Google. Sued for cybersquatting, the two guys claimed that the word Google had become generic and, therefore, was not anymore subject to protection under trademark law.
Thus, the question the US district Court was asked was to determine whether or not Google was the latest victim of “genericide”.
Interestingly, in its ruling, the US judge emphasized one relevant distinction. According to the Court, one thing is the verb, “to google”, which may have become a synonym for internet searching. Another, and totally different, is the name “Google”: this is still distinctive and, for this reason, entitled to protection under trademark law.
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