One of the lesser-known but legally significant phenomena in trademark law is genericide or genericization. It is a process by which a formerly distinctive trademark becomes a common name for a type of product or service. As a result, the trademark owner may lose their rights, since the trademark no longer fulfills its essential function: distinguishing the origin of goods or services.
What is Genericide?
Genericide occurs when the public no longer perceives a trademark as indicating the origin of a good or service, but rather as a general term for that type of good or service. In other words, the trademark becomes “generic.”
Typical Real-Life Examples:
-Aspirin
-Thermos
-Escalator
-NIVA cheese
Such risks may arise especially for trademarks that become widely used in media or everyday language.
In both public and professional discourse, genericide is often confused with the concept of trademark distinctiveness in relation to a particular product or owner. However, while genericide causes a trademark to lose its protection, distinctiveness in this context means that consumers immediately associate the brand with a particular producer’s goods what is a sign of brand strength, not weakness.
This very mistake occurred in the following case, where the applicant mistakenly interpreted the high recognition of a trademark among the general public as proof of genericide. In reality, this recognition was the natural result of a successful and consistent marketing and sales strategy not the loss of the mark’s distinguishing function. Slovak case law (e.g., the SOLETTI vs. SOLETKY case, judgment of the Supreme Court of the Slovak Republic dated 27th September 2001, file no. Obdo V 57/99) confirms that even if consumers immediately associate a trademark with a specific product (e.g., associating the word PERSIL with laundry detergent), this does not mean that the trademark has lost its distinctiveness.
Legal Framework and Protection Against Genericide
Under Article 58(1)(b) of Regulation (EU) 2017/1001 on the European Union Trademark (and similarly, under Section 34(1)(b) of Slovak Act No. 506/2009 Coll. on Trademarks), it is stated:
“The rights of the proprietor of the EU trademark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered.”
A court may, at the request of a third party or even ex officio (e.g., in opposition or cancellation proceedings), revoke a trademark for loss of distinctiveness.
How to Prevent Genericide?
Trademark owners must be proactive in defending the distinctiveness of their trademarks. Key measures include:
- Implementing a good licensing policy – requiring partners to use the trademark correctly and to notify the owner of any potential infringement. It is recommended to use the trademark as an adjective describing the goods or services, rather than as a noun or a verb (e.g. not ‘I bought a Thermos’, but rather ‘I bought a Thermos® bottle’; or not ‘I googled it’, but rather ‘I used the Google® search engine’).
- Using the ® symbol regularly – this emphasizes that the term is a registered trademark and reinforces its role as an indicator of origin.
- Investing in marketing and advertising – using the trademark exclusively to build and reinforce its identity. ECJ ruled (in Case C‑409/12 Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH), that it may be classified as ‘inactivity’ if the proprietor of a trademark does not encourage sellers to make more use of the trademark in marketing a product (e.g. in their commercial contact with customers).
- Actively enforcing rights – including cease and desist letters and legal action against parties using confusingly similar marks, whether in the media, on social networks, or online. This demonstrates active enforcement and strengthens the owner’s legal position.
- Gathering evidence – such as linguistic sources confirming that the trademark has not become a generic term in the relevant language.
Conclusion
Genericide is not an overnight process. It is the result of a slow evolution in how the public perceives a brand. This is why timely and systematic action is essential. Preventive measures and consistent enforcement are the keys to ensuring that a brand does not fall victim to its own success.
Lenka Tomanová, IDI country expert for agency in Slovakia
