Author: Erikas Saukalas, Associated Partner, Attorney-at-Law, Head of the International Relations Division at METIDA
According to the recent case decision made in the US, the word “Google” primarily refers to the search engine of Google Inc., despite the fact that the public mainly uses it as a verb to mean “searching on the internet using any search engine tool”.
The plaintiff in the case argued that the public’s use of Google’s registered trademarks “Google” and “GOOGLE” as verbs indicates that the marks became generic and suggested that these trademark registrations should be subject to revocation. The plaintiff supported their claims by a consumer survey, which showed that 51% of the surveyed participants used the mark “Google” as a reference to the verb “searching on the Internet”. However, in another survey, submitted by Google Inc., 90% of the participants identified Google to be the trademark of the search engine. Hence, due to its primary meaning, the mark “Google” cannot be considered generic to the public.
Trademark proprietors should be more attentive to the uses of their trademarks by the public. If you fail to stop the inappropriate use of your trademark in time, it can be transformed into the generic word. If this happened, you may lose your rights to the trademark, which eventually will be used by everyone. Over the years, many trademarks in the US have become generic and lost the trademark rights due to the public’s inappropriate use, e.g. aspirin, thermos, escalator and cellophane (the first two are still protected under the trademark law in some countries).
Apart from the public’s use of the trademark, its presentation by goods and service distributors plays an important role too. The European Court of Justice have stated that not only the public’s use of the trademark, but also its presentation and perception by the goods and service distributors must be taken into account (i.e. whether they see it as generic). Of course, the final decision is made by how the public and consumers perceive the trademark, yet, it is necessary to investigate how distributors, who officially distribute goods and service that the trademark marks, use and present it.
Some companies attempt to prevent their trademarks from becoming generic by launching advertising campaigns that include the appropriate use of their trademarks in order to “enlighten” the public. For instance, in their commercials, Xerox, a company producing printing and photocopying machines, encouraged the consumers not to use their trademark as a verb, e.g. “Xeroxing”, when referring to the action of photocopying.
To conclude, the mark cannot be regarded as the trademark if the public primarily associates it with the single source of goods or services, i.e. with the trademark’s proprietor. Hence, the proprietors should be more attentive to the public’s use of their trademarks and prevent them from becoming generic words to mark goods and services.