“Genericide”: How to survive it - the Google Case

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.

Confirming this ruling, the Court of Appeal made clear that the the verb use does not automatically result in a finding of genericness and that a claim of genericide must relate to a particular type of product or service. In fact, “even if the public uses the verb “google” in a generic and indiscriminate way, this tells us nothing about how the public primarily understands the word itself”. And, in regard to the latter, “because not a single competitor calls its search engine “a google” and because members of the consuming public recognize and refer to different “internet search engines”, there is no available substitute for the word “google” as a generic term”. This conclusion, favourable to Google, was recently confirmed by the US Supreme Court which, on the 16th of October, refused to review the decision made by the US Court of Appeal for the Ninth Circuit.

A happy ending for the American multinational company, who managed to survive genericide and its undesirable consequences, A clear defeat, instead, for the two defendants, who will probably avoid to register Google-inspired websites in the future.

Eventually, a recommendation for the right holder. According to Art. 20 of the EU Directive, in fact, a trademark is liable of revocation “as a result of acts or inactivity of the proprietor”. Therefore, my dear trademark owner, instead of crying over spilled milk, you’d better carefully and constantly monitor your trademark portfolio.

This is not only good practice. And your Kleenex knows it better.

 

Redatto il 24 ottobre 2017