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Trademark Erosion; Genericide

It is increasingly frequent to refer to the activity of looking up something on the internet as “googling”. Although this can be understood as a brand positioning success, the truth is that it can also bring about unwanted effects from a legal standpoint. We must remember that an essential function of a brand is to associate a series of products or services with a specific business source.

Indeed, one of the conditions for registering an international trademark is, precisely, that the brand must have distinctiveness. This distinctiveness is lost when the brand begins to be used as synonym for a certain activity or product type. This situation occurred with the Google brand, which has focused its efforts on preventing the popularization of the verb “to google” (internet search). In fact, in 2013, Google objected the inclusion of “ungoogleable” (something that cannot be found on the internet) to the list of new words prepared by the Academy of the Swedish Language, who decided to eliminate the word altogether.

Something similar is happening in our country with the brands “Confort” and “Gillette”, whose images are associated with toilet paper and razor blades, respectively, and said brands have become synonymous to the abovementioned products. What’s worse is that for some jurisdictions, the mutation of a generic term can cause loss of trademark registration, through certain grounds for expiration.

Another event that gives rise to a ground for expiration, that is to say, for the loss of validity of a trademark, is given by the lack of use in the national market. Therefore, not only does registering a mark entail directing a strategy based upon distinctiveness, but also safeguarding that the product or service is used in the place where it was registered. In this regard, it must be noted that such grounds are not yet epitomized in the Chilean law; however, it is expected their inclusion by way of amendment to the Intellectual Property Law.

Pursuant to the bill, the genericide can only operate once the holder agrees that the word composing the mark becomes a synonym of that intended to be distinguished. Nevertheless, it is also envisaged that the use of the symbol ® in harness with the mark may halt its transformation, since it would account for a trademark.

In view of the above, it is recommended to keep the mark free from any advertising that may transform it into a synonym of that the protection of which is intended; in addition, it is recommended the use of the symbol ® to prevent transformation and enable the holder to bring criminal actions against third parties that may use the mark without its authorization. The foregoing is in order to avoid the confusion of the mark with that intended to be distinguished. Therefore, becoming a synonym is not tantamount to commercial success, but rather to the loss of the mark identity, or put in other words, to trademark erosion.