Popularity-a double edged sword for trademarks?

Every brand strives to become popular in the market and expand its customer base. Popularity backed by quality helps a company to create strong brand equity which enables it to make larger profits compared to its competitors. While popularity is an important end goal for every company, sometimes being over-popular can back fire too. Hence,it is the right balance between popularity and distinctiveness that determines the life of a trademark. Let’s see how fame can be a double edged sword for trademarks.

Well-known trademarks: extra-ordinary protection for good-will and reputation:

Let’s say that a new apparel brand in the market is named ‘Pepsi’. Most of us may sub-consciously end up thinking that the apparel brand is a new venture of PepsiCo. – a multi-national food, snack and beverage corporation. This is the power of a well-known trademark.

In India, Trade Mark Rules 2017 established a new procedure to allow the Registrar to proclaim a particular trademark as ‘well known’. As per the Trademarks Act, 1999, a well-known trademark is defined as ‘a mark which has become so popular with a large segment of the society which uses such goods or services that the use of such mark in relation to other goods or services would likely indicate a connection in trade between those goods or services and a person using the mark in relation to the first mentioned goods or services.’ How is it different? Unlike other trademarks, a well-known trademark has established its goodwill in the market. It is thus protected throughout the country and across categories of goods and services. Hence, a well-known trademark receives extra protection against registration of identical or deceptively similar marks as well as against their misuse for any goods/services.

It is important to note that well-known marks were accorded statutory protection only in the year 1999, prior to which the well-known marks were protected under the common law. Let’s take the example of the landmark case concerning a well-known trademark which was decided on the principle of passing off. The case-Daimler Benz Aktiengesellschaft&Anr v. HyboHindusta, involved car manufacturer of Mercedes Benz and a manufacturer of under-garments who sold the said products under the mark-Benz. The Court restrained the latter from using the impugned mark since the word‘Benz’ is associated with a popular and one of the finest engineered cars in the world, the use of the word for other goods can be considered totally invalid. The Court also highlighted the importance of ‘spill-over reputation’ of the well-known mark and asserted that the brand‘Benz’ is probably known for its quality and sophistication to every family that has ever used a car and occupies a unique place in the automobile market. Hence, usage of mark ‘Benz’ for other products can misguide the consumers into believing that the products have been manufactured by the producers of Mercedes Benz, thus giving undue advantage to the other entity.

Declaration of a mark as well-known certainly gives an upper hand to a brand. Recently, ISKCON (International Society for Krishna Consciousness) was declared a well-known mark by the Bombay High Court. A New Delhi-based Vishna Foods Pvt. Ltd. was restrained from using the trademark-ISKCON in any manner until further orders. Hence, we can say that popularity, good will and certain other values of a brand makes it eligible for possessing a well-known mark. Now that we have seen how popularity acts as a boon for a company, let cover the other side of the coin where popularity can act as a bane.

Genericide of trademark- drawback of being too popular!

Few years ago, Google requested people to refrain from using the word ‘google’ as a verb. For example- ‘I am googling some information.’ Why did Google do so? In 2012, a case was filed by a party in Arizona district court,petitioning to cancel the ‘Google’ trademark. The party pleaded that the trademark be declared as ‘generic’ as majority of the people use the word ‘google’ as a common verb for searching on any search engine on the internet. Even though the final decision of this case was in favor of Google, the mega firm had learnt an important lesson.

Going by definition, generic trademark is a mark that owing to its massive popularity has become a common term for a general class of goods or services. This is mostly against the intentions of the trademark's owner. For example: Escalator, Cellophane, Band-aid, Flip phone were all very popular trademarks once upon a time.

Genericide of a trademark happens when its distinctiveness gets gradually eroded with time due to many reasons. As discussed above, one of the reasons is using a brand name as a verb can eventually make it a generic term. It can also happen if trademark owners in an attempt to make their brand popular and memorable refer to their products with the respective name of the brand. Like ‘band-aid’ for a bandage. This leads to people eventually using the brand name for all things belonging to the same class.

Understanding the gravity of the situation, companies have started taking prompt actions to discourage customers against generic use of brand names. Photocopier brand- Xerox had launched a campaign requesting people to drop the use of the word Xerox as a synonym for copying. Their punch line also highlighted the fate of other trademarks that have now been declared generic. One of their campaign said- “When you use ‘Xerox’ the way you use ‘aspirin’, we get a headache!”

Popularity can be a tricky game for companies. As brands start taking critical places in people’s lives, companies need to frame strategies to channelize the popularity for furthering the interest of the company and simultaneously protecting and enforcing their IP rights to secure their identity.