Qualifications of Copyright Candidate in India

GENERICIDE: WHEN A TRADE MARK BECOMES TOO POPULAR

John Sebastian*

Can Google Co. lose the rights to its trademark

‘Google’? So, can any company use the trademark of
this Internet giant without permission, claiming that it
has become part of common parlance? Is ‘googling’ a
term which can be trademarked? Similarly, can Apple’s
‘AppStore’ or Tata’s ‘Nano,’ be used by anyone?

What happens if a trademark becomes so popular that it

becomes a part of the common language, and no longer
only signifies the source of the product? What if it now
denotes the whole species or class of product rather
than the source? The answer is simple: Genericide.

Many products have witnessed this in the past – Aspirin,

butterscotch, kerosene and dry ice were all trademarked
terms that lost their marks due to genericization. This
article seeks to understand this phenomenon, especially
in the Indian context, where it has not received much
attention. For this, we delve into the laws of India and
the US, seeking to answer many important questions,
such as - Is it possible to prevent genericization of a
trademark? And how? Can one be liable for passing off
even though one has used a genericized trademark? And
to what extent?

This project answers these questions, postulating that it

is nearly impossible to use legal suits to prevent
genericization, and that every trademark owner has to
always maintain a link which identifies the product with
the source (a secondary meaning). This is of high
contemporary importance as many trademark holders
find themselves stuck in a position where popularising
their own trademark may lead to its destruction.

*
IV Year Student, B.A. LLB. (Hons.), National Law University, Delhi.

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I. INTRODUCTION

1. Genericization

Trademarks are an important tool and protect both the consumer and the
producer in a market based competition economy. They provide consumers
a way of ascertaining the producer, reduces search costs and of ensuring an
expected quality. The producer or manufacturer is assured of the fact that
others cannot use his reputation and earned respect by ‘passing off’ their
products under his name.
However, sometimes trademarks become so widely known and a part of
common parlance that they start denoting the general class of product or
service itself, rather than merely the source. These terms become used as the
colloquial or generic description for, or synonymous with, a general class of
product or service, rather than as an indicator of source or affiliation
(secondary meaning) as intended by the trademark's holder. Using a
genericized trademark to refer to the general form of what that trademark
represents is a form of metonymy.
Examples of such genericized trademarks are numerous: Aspirin,
butterscotch, escalator, kerosene, thermos and countless other terms are used
to refer to the class of product than the particular product from a particular
source.
So what is the position in Indian law w.r.t genericization? It is clear, via
Section 9 of the Trademarks Act, 1999 that a person cannot register a mark,
which is already generic in nature. But what of a mark that became generic
after registration? Can one’s registration be revoked on account of
genericness? This article, consequentially, seeks to analyse the effects of the
natural phenomenon of genericization of trademarks. The general scheme of
the article will follow the pattern of the research question given below.

2. Research Questions1

1
These questions have been answered in Part III in this article (3. Scrutiny).

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 Genericide: When a Trade Mark becomes Too Popular

The research questions have been formulated to cover as much of the topic
as possible, and giving us the best possible understanding of the same within
the confines of this article.
Our first aim is to understand the genericization of trademarks. Hence the
first research question is:
(a) How does a trademark become genericized? What are the various tests
for the same?
The next question is of high contemporary importance, especially with
companies like Google attempting to prevent the genericization of their
trademarks. The next question, therefore, is:
(b) Is it possible to prevent genericization of a trademark? And how?
The third question emerges especially in the light of some recent decisions
of courts in the United States that one can be held liable for passing off even
if the term is a generic one:
(c) Can one be liable for passing off even though one has used a genericized
trademark? And to what extent?
The last question is based on an understanding of various theories
underlying the trademark regime, which include utilitarianism and social
planning theory. This is because, along with the legalese question of
whether genericized trademarks are protected, we need to analyse whether
they should be protected:
(d) Do intellectual property theories allow for the protection of generic
trademarks? And if so, which theories do allow this protection?
3. Research Scheme

The first chapter introduces the article, and states the research questions.
The second chapter is devoted to understanding the principles and laws
applicable to our article. The first part will seek to analyse the set of laws,
which govern the process. This will concisely state the laws on the same, in
India, referring to legislations (the Trade Marks Act, 1999 etc.), judgments
and international conventions to which India is a signatory. The second part
will scrutinize some leading cases in the US on the same.

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The third chapter is an analysis of all the relevant areas of our article, and
answers the research questions.
The fourth chapter concludes the article.

II. UNDERSTANDING THE LAW

This part of the article is exclusively devoted to an in-depth analysis of the

laws and principles governing generic trademarks, and the genericization of
trademarks. For this purpose, we shall try state the law and study some
important cases in detail, in order to gauge principles, which the statutes
often hide. In this respect, it is deemed apt to observe the systems in two
countries, India and the US. We have chosen India, because, well, we live in
India and are most directly affected by her laws. The US on the other hand,
is chosen for being the country, which probably sees the greatest trademark
infringement action2, being the biggest economy in the world.3

1. India

a. The Trademarks Act, 1999

The Trademarks Act, 1999 is a very important statute relating to trademark

law in India. A lot of the judicial precedents in the country are based on an
interpretation of its provisions. If scrutinized carefully, we find that the
statute gives us plenty of clues, but no clear stance, on the issue of the
genericization of trademarks.

2
Though recent data might indicate that China has surpassed us when it comes to sheer
numbers in intellectual property litigation, available at
http://www.ipfrontline.com/depts/article.aspx?id=25932&deptid=6, (last visited Jan. 29,
2012). Also see WIPO, Proposal For A Study On The Possible Introduction Of “Filing
Languages” In The Madrid System, Special Union for the International Registration of Marks
(Madrid Union), 40th (23rd Extraordinary) Session, Geneva 2 (Sep. 22 to 30, 2008).
3
World Economic Outlook Database-September 2011, International Monetary Fund,
available at http://www.imf.org/external/pubs/ft/weo/2011/02/weodata/weorept.aspx, (last
visited Dec. 14, 2011).

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Section 94 of the Act lays down the various grounds for the refusal of
registration of a trademark. Sub-clause (b) and (c) of sub-section 1 are
particularly important, laying down that trademarks,
“(b) which consist exclusively of marks or indications which may serve in
trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of
the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and established
practices of the trade,” shall not be registered.
The grounds provided in (b) and (c) are nothing but a legalese way of saying
that generic terms cannot be registered, because they together, pretty much
cover the definition of the term ‘generic,’ an exact definition of which is
missing in the Act.5 The proviso to Section 9 provides that “a trademark
shall not be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use made
of it or is a well-known trade mark.” Hence, an acquiring of a secondary
meaning makes an otherwise non-registerable mark registerable. We shall
see the implications of this in the course of this article.
The next section that is important for us to analyze is Section 11, which
doesn’t talk particularly about generic terms, but is important as the
principles therein can be logically extended to help answer our third
research question.6 Sub-clause (1) of S. 11 prevents marks similar to other
trademarks to be registered if ‘there exists a likelihood of confusion on the
part of the public, which includes the likelihood of association with the
earlier trademark.’7 Section 11(2) provides that trademarks shall not be
registered even if it is to be registered for marks dealing with dissimilar
goods and services, if doing so would ‘take unfair advantage or be

4
The Trademarks Act, 1999, S.9.
5
This absence is indeed marked, so many trademark cases being based on the question of
genericness.
6
Can one be liable for passing off even though one has used a genericized trademark? And to
what extent? – The law here will be applied to the research question in Part III of the article
(2. Analysis).
7
The Trademarks Act, 1999, S.11(1).

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detrimental to the distinctive character or repute of the earlier trademark.’8

This particular section can be used to prevent a person from using a
trademark even if the term is of common use.
The next section, 12, is also relevant. It basically provides protection to a
person who has a similar or identical trademark, in the case of ‘honest
concurrent use.’ Since generic terms, being common in nature, are
extremely susceptible to honest concurrent use, this applies directly. Section
13 deals with INNs,9 and exists to prevent the registration of certain
internationally accepted generic names for pharmaceutical substances.10
Section 19 is important to the extent that it allows the withdrawal of
acceptance of a trademark on an error, or in the light of circumstances. S. 21
allows opposition to registration. S. 25 states that the duration of a registered
trademark is of 10 years, with the provision that it can be renewed. It is here
that the researcher will try to sneak in the concept of genericization of
trademarks into Indian law. S. 27 is interesting because it disallows a person
from instituting a proceeding to prevent or recover damages for
infringement of an unregistered trademark, but at the same time does not
take away the rights of action for any claim of passing off. This concept will
be used later to help answer our research questions.
Section 30(2)(a) lays down that a trademark is not infringed when “the use
in relation to goods or services indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of production of goods or of
rendering of services or other characteristics of goods or services.” In
essence, when the use is to denote the kind of product rather than the source
i.e. the term has become generic, it cannot be protected against
infringement.

8
Id., S.11(2).
9
International Nonproprietary Names (INNs) are internationally recognized names for
pharmaceutical substances recommended by the World Health Organization (WHO) and
provide a standardized system of nomenclature.
10
The generic name allows an understanding of the drug even when that individual drug is
not known, and is a vital piece of information that is compulsory on a medicine label. INNs
are nonproprietary in nature, which implies that all manufacturers of that pharmaceutical
substance, irrespective of the brand name under which each manufacturer markets the drug,
can use the same INN. See K.M. Gopakumar, Nirmalya Syam, A Study on the Use of
International Nonproprietary Names in India, CENTRE FOR TRADE AND DEVELOPMENT 2
(2007).

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Having summarized the laws applicable, let’s now go on to discussing the

principles via case law.
b. Judicial Precedent and Principles

(i) Heinz Italia and Anr. v. Dabur India Ltd.11

 Facts & Contentions

In this case, the plaintiffs (Heinz Italia) claimed infringement of
their trademark on ‘Glucon-D’ by the defendants (Dabur). The
defendants had come up with a product called Glucose-D, with
deceptively similar packaging.
The contentions that are relevant to us here are firstly, the
defendant’s claim that the trademark could not be protected, being
generic in nature. The second contention was, simply put, of passing
off and trademark infringement.
 Principles and Judgment
With regard to the question of genericness, the court noted that the
term glucose was undoubtedly a word of common parlance, and
would fall under the definition of a generic word. But the test as to
having a trademark over it nevertheless would depend upon its
having derived a secondary meaning, by which it has come to
denote more than just the species of product, but the source, or
manufacturer of the same. The judge cited the Godfrey Philips India
case12 to show that even a generic word could be the basis for an
injunction, in special circumstances.
The court observed that even unregistered or generic trademarks
could be passed off and held that the main principle of trademark
infringement and passing off is that ‘the passing off action depends
upon the principle that nobody has a right to represent his goods as
the goods of some body. In other words a man is not to sell his
goods or services under the pretence that they are those of another

11
(2007) 6 SCC 1.
12
Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd. 69 (1997) DLT 8.

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person.’13 Quoting Lord Diplock14, he noted that the modern tort of

passing off has five elements i.e. ‘(1) a misrepresentation, (2) made
by a trader in the course of trade, (3) to prospective customers of his
or ultimate consumers of goods or services supplied by him, (4)
which is calculated to injure the business or goodwill of another
trade (in the sense that this is a reasonably foreseeable
consequence), and (5) which causes actual damage to a business or
goodwill of the trader by whom the action is brought or (in a quia
timet action) will probably do so.’15
So, the court essentially disregarded the question as to the
genericness of the product to look at the principle behind the law,
and decided that intentional misrepresentation made to injure the
business or goodwill of a person, and calculated to deceive, is all
that matters. So, in a passing-off action if the plaintiff has
established his reputation and the defendant’s product is similar so
as to be capable of confusing the purchasing public, an injunction
would follow.16
(ii) Shell Brands International v. Pradeep Jain17

 Facts
The plaintiffs, Shell India, were involved in the production and
distribution of oil and oil related products, having established
themselves in India in 1946. They use a trademarked ‘shell’, as their
logo. The defendants in the instant case are involved in the
exporting of bed-sheets, quilts and pillow covers in various
specifications; apparently being a proprietary concern. They do not,
however, deal with oil products of any kind.
 Principles and Judgment
There were essentially two questions of importance in this case:-

13
supra n.11.
14
Erwin Warnink BV v. J. Townend & Sons 1979 (2) AER 927.
15
Id.
16
Id.
17
CS (OS) 639/2008, decided on 01.02.2010.

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(a) Whether the word Shell was a generic word and if so to what
effect.
The court observed that the purpose of trademarks was to identify
the source of the product. Marks, they said, are of four varieties: -
i) Descriptive
ii) Geographical
iii) Generic
iv) Arbitrary
A mark is arbitrary, if it has no relation with the goods and services
it represents, almost fanciful, so to say. Geographical marks are
named after geographical markers, and descriptive marks are used to
describe the product (but such description should not amount to the
common name used for the class of products). A generic word needs
no explanation; it is a term used in common parlance.
Now, the plaintiffs, of course, contended that the trademark Shell
was arbitrary, having no relation whatsoever to the products of the
plaintiff. They contended that, in relation to petroleum products, it
can be safely said that the mark has acquired a secondary
significance, as to identify itself with the plaintiffs. Upholding the
same, the court observed that ‘shell’ is a common word, signifying
many things. They said that though shell was not a descriptive word
in relation to the goods and services offered by the plaintiff, it is a
common word. They held that ‘there is no genericness of shell, in
relation to petroleum products. However, it is also undoubtedly a
common dictionary word.’18
The second issue was: -
(b) Whether the plaintiffs were entitled to an injunction on account
of infringement.
The defendants in this case did not participate or engage in the
business of petroleum or allied industries. Using Section 9 of the
Trademarks Act, 19the court noted that the plaintiffs had been unable

18
Id.
19
The Trademarks Act, 1999, S.9.

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to show that the defendant uses the mark in relation to any products
sold, or offered in the market. It is merely a trade name used for the
purpose of exports. The particular section (29(5)), was specifically
drafted to protect such honest concurrent use. The judge noted that
‘the object of trademark law is to prevent conduct by a trader or
producer, which is calculated to injure the business or goodwill of
another trader (in the sense that this is a reasonably foreseeable
consequence). This is more so, where generic terms, or common
words are used for trademark; this also applies where the words
describe the goods, or services, or some of their prominent
attributes.’20
2. US

Now let’s go into understanding what the position in the US is on the issue
of genericness of trademarks. The Lanham Act is the governing legislation
in the US for trademark protection. It will not be explained separately, but
through the cases discussed below, which should be sufficient to draw up a
picture of what the law is. Let us also note that the categorization of
trademarks in US law varies only slightly from Indian law.21
a. Psk, Llc v. Hicklin22

 Facts
The case related to the use of the term ‘overhead,’ an undoubtedly
generic term. In this case, the plaintiff was an authorized distributer
of garage doors and had a registered trademark in a red ribbon logo
featuring the phrase ‘overhead door.’23 The defendants, the
Hicklins, operated a residential garage door installation and repair
business. They ran multiple Yellow Pages ads prominently featuring
the term ‘overhead.’ This did cause a certain degree of confusion
amongst the general public.
 Principles and Judgment
20
Id.
21
See Abercrombie & Fitch Company v. Hunting World Inc., 537 F.2d 4, US Court of
Appeals for the Second Circuit.
22
2010 WL 4978878 (N.D. Iowa).
23
Id.

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There is little doubt that the term overhead is generic. The court
noted, however, that the passing off claim was not barred by the
finding that “overhead” is generic, which only means that it’s not
protected against copying. If a generic term has de facto secondary
meaning, relief may be appropriate to require the copier to take
reasonable measures against confusion. Use of a generic term,
without more, can’t give rise to a claim, but a defendant’s failure to
adequately identify itself as the source, or use of other confusion-
generating practices, might do so. What’s required is a showing of
(de facto) secondary meaning plus likely confusion; however,
liability is inappropriate if defendants used every reasonable means
to prevent confusion.24
The court noted that Hicklin had intentionally used and emphasized
the term ‘overhead’ in their advertisements in an effort to confuse or
deceive consumers. The standard of confusion here was a genuine
chance of being deceived in spite of having exercised a degree of
care. The issue is not ‘what a perfectly attentive customer would do,
but what amount of care can reasonably be expected of potential
consumers.’25
b. Bayer Co. v. United Drug Co.26

 Facts
In this case, the predecessor of the plaintiff was a German
corporation engaged in the manufacture of chemical products,
among them the drug in question, which was its own invention. The
plaintiff had registered the name ‘Aspirin’ as a trademark. The
plaintiff had since 1899 been selling throughout the United States a
drug known as ‘acetyl salicylic acid,’ to which they had given the
artificial trade-mark “Aspirin.” Further, they had expended large
sums of money in popularizing the trademark so adopted, which had
thus become a synonym for the acetyl salicylic acid manufactured
by them.

24
Id.
25
Id.
26
272 F. 505 (S.D.N.Y. 1921).

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The plaintiffs, had advertised mainly to chemists, and always

clearly stated the name ‘Aspirin,’ and also assured, though
advertisements to this particular class of persons, that the drug
‘Aspirin’ was clearly associated with the plaintiff’s company. The
plaintiff, however, did not sell directly to the public at all. Aspirin,
hence, in the public’s mind, came to be associated with the kind of
medicine rather than the manufacturer of the same (Bayer Co.), and
came to denote acetyl salicylic acid. Once the patent expired, the
defendants too started manufacturing the same drug, and marketed it
as ‘Aspirin.’ The plaintiffs, alleging infringement, have brought up
the instant suit. The defendants, of course, contended that the term
had become generic and, hence, could not be granted protection.
 Principles and Judgment
In the instant case, the judge noted that it might be that the name
‘Aspirin’ in fact had come at once to describe the drug in question
and also its origin from a single source. If it did, that would be
enough to justify some protection, since the identity of the source
need not be known. Indeed, the whole law of ‘secondary meaning’
is built upon that presupposition.
The single question, as the judge viewed it, in all these cases, is
merely one of fact: “What do the buyers understand by the word for
whose use the parties are contending? If they understand by it only
the kind of goods sold, then, it makes no difference whatever what
efforts the plaintiff has made to get them to understand more. He
has failed, and he cannot say that, when the defendant uses the
word, he is taking away customers who wanted to deal with him,
however closely disguised he may be allowed to keep his identity.”27
So here the question was whether the buyers merely understood that
the word ‘Aspirin’meant this kind of drug, or whether it meant that
and more than that; i.e., that it came from the same single, though, if
one please anonymous, source from which they had got it before.
This is in keeping with the leading view on this subject, that relief
always depends upon the idea that no man shall be allowed to

27
Id.

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mislead people into supposing that his goods are the plaintiff's, and
that there can be no right or remedy until the plaintiff can show that
at least presumptively this will result. Using this principle, a
trademark and a trade name were refused protection, though valid
elsewhere, in parts of the country where the buyers did not know
that they signified the owner, and because they did not.
The judge went on to give a very interesting judgment. In this case,
the general public, noted the judge, had come to associate the term
‘Aspirin’ with the kind of drug, rather than the source i.e. Bayer Co.
This was because the company only advertised to the chemists
themselves and the source was known to them only. Hence,
applying the test, it can be seen that the plaintiff cannot get
protection when it comes to the general public, and the defendant
may market his product to them under the name ‘Aspirin.’ When it
comes to the class of chemists, however, they knew the source, and
associated ‘Aspirin’ with the plaintiff’s company. Hence, whilst
selling to chemists, the defendant had to clearly specify his
company’s name and could not market the product merely as
‘Aspirin.’
 Decision
The judge granted an injunction against direct sales of the drug
under the name ‘Aspirin’ to manufacturing chemists, physicians,
and retail druggists. In sales to consumers there need, however, be
no suffix or qualification whatever.

III. ANALYSES

This part of the article is devoted to an in-depth analysis of the various

principles we have encapsulated in the article thus far, and apply it in order
to seek the answers to our research questions. The first section seeks to
understand the concept of trademark dilution, which, it is alleged, can be
used as a shield against genericization. The second section is devoted to an
analysis of the trademark regime via various social theories. The third
section is more important as it is what answers our research questions
finally.

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1. Trademark Dilution

Trademark dilution is a trademark law concept giving the owner of a famous

trademark standing to forbid others from using that mark in a way that
would lessen its uniqueness. In most cases, trademark dilution involves an
unauthorized use of another's trademark on products that do not compete
with, and have little connection with, those of the trademark owner.28 The
Federal Trademark Dilution Act, 1996, amended Section 43 of the Lanham
Act to provide protection for “famous” trademarks. The Act defines
“dilution” as “the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of –
1) competition between the owner of the famous mark and other
parties, or
2) likelihood of confusion, mistake, or deception.”29
The corresponding provision in Indian law is found in Section 11(2) of the
Trademarks Act, 1999:
“Section 11(2): A trade mark which -
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those
for which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered if or to the extent the earlier trade mark
is a well-known trade mark in India and the use of the later mark without
due course would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trade mark.”30
So, it can clearly be seen that well-known marks are protected against
dilution, even in case the goods or services are not similar to the earlier
proprietor’s when the new mark would cause ‘unfair advantage,’ or be
‘detrimental to the distinctive character or repute of the earlier mark.’
The primary purpose of the dilution doctrine is to provide for an
independent commercial tort that addresses the “gradual diminution or

28
Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002).
29
Michele M. Vercoski, Ty Inc. v. Perryman: The Seventh Circuit Disarms Trademark
Owner of Power to Enjoin Under Dilution Theory for Threat of “Beanies” Mark Becoming
Generic, 5 TUL. J. TECH. & INTELL. PROP.163 (2003), available at heinonline.org (last visited
on Nov. 21, 2011).
30
The Trademarks Act, 1999, S.11(2).

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whittling away of the value of a trademark” as a result of use by another.31

However, to really understand this concept, let us look into the famous
‘Beanie Babies’ case.32
In this case, the court, outlining three possible types of dilution,33 found the
claim for dilution unsubstantiated on all counts largely because of the
simple fact that the defendant was, for the large part, selling the products of
the plaintiff itself. To say otherwise would be to find infringement of all
sellers dealing in a traditional good’s aftermarket.34 Producers cannot be
said to own their aftermarkets as well.
Importantly, the court noticed that Ty was probably “seeking an extension
of anti-dilution law to forbid commercial uses that accelerate the transition
from trademarks… to generic names.”35 The court concluded that such an
extension of anti-dilution law is not permissible because although there is a
social cost when a trademark becomes generic compelling the owner to
invest in a new trademark, there is a larger social benefit because a new
word is added to ordinary language. The court was also wary of arming
trademark owners with the power to enjoin uses of their mark that threaten
to render their mark generic, which would lead to a flood of litigation.
The court denied the injunction generally, but granted it against the use of
the term ‘Beanie’ in connection with non-Ty products, but that was just due
to misdescription and false advertising rather than a dilution claim.
It can clearly be seen, especially in our context, that a dilution claim cannot
be brought for protection against genericization. This is because social
benefit of trademarks would be less than the corresponding social loss of the
use of the term, if protection is granted.

2. Intellectual Property Theories36

31
J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, (4th ed.
2002); Vercoski, supra n.29.
32
supra n.28.
33
Id. (i. Blurring, ii. Tarnishment, and iii. Free riding).
34
Id.
35
Id.
36
This is based on the varied theories of intellectual property. This is largely a summation of
William Fisher’s article on theories of intellectual property, except for the analysis on effects
on genericization.

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In this part of the article, we will state the fundamental doctrines of various
theories on intellectual property law, and then see their consequent
adaptation in trademark law, and naturally, in the concept of genericization.
There are essentially four schools of thought in intellectual property law: the
utilitarian theory, the labour theory, the Hegel-Kantian moral rights37 theory,
and the social planning theory. We shall analyze each of these schools, and
seek to answer our fourth research question on the social and economic
effects of genericization of trademarks. The fundamentals and criticisms of
these theories are largely summary forms of the arguments given by
William Fischer in his article Theories of Intellectual Property38and have
been put here in order to make the understanding of these theories easier.
The application of these theories to genericization is, however, the
researcher’s.

a. Utilitarian Theory

(i) Fundamentals

The first and most popular of the four employs the familiar utilitarian
guideline that lawmakers’ beacon when shaping property rights should be
the maximization of net social welfare. Pursuit of that end in the context of
intellectual property, it is generally thought, requires lawmakers to strike an
optimal balance between, on one hand, the power of exclusive rights to
stimulate the creation of inventions and works of art and, on the other, the
partially offsetting tendency of such rights to curtail widespread public
enjoyment of those creations.39
The primary economic benefits of trademarks are, according to utilitarians:
i) the reduction of consumers’ search costs
ii) the creation of an incentive for businesses to produce consistently
high-quality goods and services; and

37
Also known as the Personality Theory.
38
Fisher William, Theories of Intellectual Property, in Stephen Munzer, ed., New Essays in
the Legal and Political Theory of Property, CAMBRIDGE UNIVERSITY PRESS 168-199 (2001).
39
Id. at 169.

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 Genericide: When a Trade Mark becomes Too Popular

iii) the improvement of our language: This particular benefit has been
added of late, by theorists who would claim that trademarks lead to
the creation of words which come to be valued both for their
information value and intrinsic pleasantness. These words economize
on costs of communication too. For example, the word ‘Xerox’ came
to be so generic, and became a common dictionary word because of a
decisive ease of use over the alternative, which is ‘photocopier.’ The
word has contributed to making the language richer.
(ii) Weaknesses

Utilitarianism has many flaws:

i) Utilitarianism seeks to maximize the happiness of the maximum number
of people. Now how is this measured? Contemporary economists have come
up with various identifying criteria for the same, including the ‘wealth
maximization’ criterion40 and the ‘Kaldor-Hicks’ criterion.41 However, both
of these have huge problems.42
ii) It approximates the needs of an individual to that of society as a whole
and assuming that certain parts would be willing to ‘sacrifice’ for the greater
good.
iii) It is nearly impossible to categorically lay down the entire relevant
criterion for the supposed measurement of the social benefit, and the
objectiveness of the theory loses itself in the subjectivity of the choosing of
these factors.
iv) The production of many intellectual products may not depend upon legal
protection.43
(iii) Effects on Genericization

40
This essentially means that if a particular activity leads to the maximization of wealth,
irrespective of whose hands it is falling into, it should be encouraged.
41
This means that one state of affairs is preferred to a second state of affairs if, by moving
from the second to the first, the ‘‘gainer’’ from the move can, by a lump-sum transfer,
compensate the ‘‘loser’’ for his loss of utility and still be better off.
42
Firstly, they are accused of being pro-rich, in the sense that even if the benefits are wholly
accruing to a richer person, and poor people stay the same, or are negatively affected, the
utilitarian will still hold the state just.
43
Other monetary or nonmonetary rewards would be sufficient to sustain current levels of
production even in the absence of intellectual-property protection. supra n.38, at 17.

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There is no doubt that the awarding of a trademark can have socially

harmful effects too, in the sense that they can effectively deprive the public
from the use of a particularly pleasing or informative term (especially in the
case of INNs). Therefore it is necessary that marks should be protected only
when they are socially beneficial and not when they are, on balance,
deleterious.44
It was interesting to note that, amongst other things, one of the supposed
benefits of trademarks was the contribution that they tend to make to our
language.45This is clearly a reference to trademarks that later on become
generic due to common usage. Now, it is clear that once this is so, it would
be socially harmful to prevent the public access to that term, which has
become a part of common parlance. The utilitarian would clearly have to
weigh the net positives and negatives. In the case of INNs, for example, it is
easy to predict the utility outcome in favour of preventing the trademarks
from being registered because of the massive social harm that could follow.
A pure utilitarian perspective is, hence, perfectly reasonable and does indeed
protect the public’s interests as well. The problem however remains (and a
huge problem it is) on the calculation of the net social benefits in a fringe
case, which can be extremely difficult and would invariably throw the onus
on an individual judge to ascertain for himself the ‘relevant’ benefits
accruing from accepting or denying the trademark.
b. Labour Theory

(i) Fundamentals

This approach centers on the proposition that “a person who labors upon
resources that are either unowned or “held in common” has a natural
property right to the fruits of his or her efforts – and that the state has a duty
to respect and enforce that natural right.”
Locke qualifies this natural right with the added proviso that a person may
legitimately acquire property rights by mixing his labor with resources held
“in common” only if, after the acquisition, “there is enough and as good left

44
William Landes and Richard Posner, Trademark Law: An Economic Perspective, 30,
Journal of Law and Economics, 265 (1987). Id.,at 3.
45
Refer to Chapter 3, 3.2.1.1. Fundamentals, in this paper.

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 Genericide: When a Trade Mark becomes Too Popular

in common for others.” Nozick, in Anarchy, State and Utopia46, contends

that the correct interpretation of this limitation (“correct” in the senses (a)
that it probably corresponds to Locke's original intent and (b) that, in any
event, it is entailed by “an adequate theory of justice”) is that the acquisition
of property through labor is legitimate if and only if other persons do not
suffer thereby any net harm. “Net harm” for these purposes includes such
injuries as being left poorer than they would have been under a regime that
did not permit the acquisition of property through labor or a constriction of
the set of resources available for their use -- but does not include a
diminution in their opportunities to acquire property rights in unowned
resources by being the first to labor upon them.
(ii) Criticisms

i) Why exactly should labor upon a resource held “in common” entitle the
laborer to a property right in the resource itself?
ii) Proportionality - As Nozick points out : “If I pour my can of tomato juice
into the ocean, do I own the ocean?”47 This proportionality problem, or the
extent to which a person’s labour grants him exclusivity, is something,
which Locke’s theory cannot sufficiently answer.
iii) It may not have applicability to intellectual property because of its
inexhaustible nature.48
iv) Locke’s theory bases itself on rights that are, by their nature,
inexhaustible, and can be passed on in perpetuity. Trademarks, on the other
hand, are decidedly temporary in nature, and need to be constantly renewed.
v) Also, what is this ‘common property’ when it comes to intellectual
property law? It clearly includes ideas, culture, and also language. But what
if subsequently the trademark itself becomes a part of the language i.e.
common property, due to genericization? This is what we shall seek to
understand in the next section.
(iii) Effects on Genericization

46
ROBERT NOZICK, ANARCHY, STATE, AND UTOPIA 178-82, (1st ed. 1974).
47
Id.
48
Locke’s theory was initially meant to protect those articles, which, by their very necessity,
have to be enjoyed in exclusivity, such as food.

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NLIU Journal of Intellectual Property Law

Taking the basic premise of the labour theory i.e. adding labour to the
commons’ property, along with the proviso i.e. that it should not affect
another person negatively in the process, we see a direct and easy
understanding of genericization from the labour theory perspective.
Conferring monopoly privileges on the creators of intellectual products can
hurt more than help the public.49 Take the word “Olympics,” for example, a
prime case of genericization. If the term did not exist, “we would have
contrived other ways to communicate the notion of periodic amateur
international sports competitions untainted by ideology or warfare. But
because the word does exist, we have become dependent on it. No other
word or collection of words quite captures the idea. Consequently, if we
now prohibit “unauthorized” uses of the word – for example, in connection
with the “Diplomatic Olympics” or on a T-shirt highlighting the
hypocritical way in which the ideal has been applied in recent years -- we
have left the public worse off than if the word never existed.”50
Consequently, under Locke’s own proviso, such a term, being genericized,
would not be entitled to protection. This theory, too, it can be seen, does not
protect a trademark on becoming genericized.
c. Hegel-Kantian Personality Theory

(i) Fundamentals
This theory derives loosely from the writings of Kant and Hegel. Its premise
is that private property rights are crucial to the satisfaction of some
fundamental human needs and that policymakers should strive to allocate
entitlements to resources that best enables people to fulfill those needs.
Intellectual Property Rights may therefore be justified because they shield
from appropriation or modification artifacts in which authors have
expressed their wills and/or because they create economic and social
conditions conducive to creativity, which is important to human flourishing.
This theory subsequently leads to a conception of this intellectual property
as a moral right, and become integral to a human being, being a direct

49
Wendy J. Gordon, Property Right in Self-Expression, 102 YALE L.J. 1533, 1540-78 (1993);
Edwin C. Hettinger, Justifying Intellectual Property, 18 PHILOSOPHY AND PUBLIC AFFAIRS
31-52 (1989); supra n.38, at 27.
50
Id.

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manifestation of their wills. Hence, Hegel argues, in the same way that one
has an exclusive right over one’s body and will, one has an exclusive right
over expressions of the will, and property also, being ‘external
manifestations’ of something so integral to human beings.
(ii) Criticisms

i) How do we identify and agree upon the specific needs or interests that we
wish to promote.51
ii) When an author has revealed her work to the world, does it nevertheless
continue to fall within the zone of his/her “personhood”?
iii) Similarly, should an artist's investment of his self in a work of visual art
– a painting or sculpture – prevent others from imitating his creation?52
iv) Also, is the protection of trade secrets necessary to protect privacy
interests? Most trade secrets are owned by corporations, which do not have
the personal features privacy is intended to protect. It can be seen that the
personality theory consequentially suffers from a vague notion of the
‘person.’ In trying to answer the questions as to where a person’s person
begins, and what is essential to it, it loses itself in abstraction, and also its
coherence.
(iii) Effects on Genericization

When it comes to personality theory, this is probably the only theory, out of
the four, that would continue to protect trademarks even after they are
genericized. If, after all, a trademark is deemed to be an extension of the
will of the person itself, then this would grant him a moral right to the
trademark, to the exclusivity of everyone else in the same way that his will
is exclusive of everyone else.
d. Social Planning Theory

(i) Fundamentals

51
This is because Personality theorists argue that private property rights should be recognised
when they promote human flourishing by protecting of fostering fundamental human needs
or interests.
52
Hegel thought otherwise. Id.

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“The last of the four approaches is rooted in the proposition that property
rights in general -- and intellectual-property rights in particular -- can and
should be shaped so as to help foster the achievement of a just and
attractive culture. ”53 This approach is similar to utilitarianism in its
teleological orientation, but dissimilar in its willingness to deploy visions of
a desirable society richer than the conceptions of “social welfare” deployed
by utilitarians.
(ii) Weaknesses

i) This theory does not help us there at all, but merely points to the obvious
aims of all societies: justice.54
ii) Different people might have different conceptions of justice, and hence,
different understandings of this theory, leading to nothing but confusion.
(iii) Effects on Genericization

Being closely related to utilitarianism is essential teleology, it too advocates

a maximization criterion, being of a just and attractive culture. A social
planning theorist may perfectly well advocate that other stakeholders use a
certain trademark, leading to a greater chance of genericization, and
consequent end to rights which exist in exclusivity. In this case, the loss of
genericization would clearly lead to a loss of the exclusive rights as well.
Even in general, however, this theory, since it weighs the social good before
the rights of the individual, will always tend to deny protection to
trademarks which have become generic because of the negative social
effects that this would lead to.
3. Scrutiny
This part of the article is devoted to a scrutiny of the concept of trademarks,
in accordance with our research questions. We shall apply the principles
used in cases to our questions here.

53
supra n.38, at 6.
54
The weakness of this theory lies in the fact that it doesn’t really say much at all. It is
perfectly true that we all want to live in a just society, with an ‘attractive’ culture, but the
precise difficulty lies in defining what his just and attractive society is. Even the term
‘justice’ and ‘attractiveness’ can be subject to treatises to understand what they connote.

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Research question (a): How does a trademark become genericized? What

are the various tests for the same?
In this respect, it is crucial to note the case of Bayer Co. v. United Drug
Co.55, where it was noted that even though the term ‘aspirin’ was a non-
generic term when the plaintiffs trademarked it, subsequent use has led to
the term being used to identify the product itself, rather than the defendant’s
company. The court, hence, said that the trademarked, now genericized,
cannot be protected against infringement. It was the plaintiff’s own fault that
they had advertised the product as ‘aspirin’ without referring to its
secondary meaning.
Probably the most apt quote in this regard is from the judgment of Friendly,
J., in Abercrombie & Fitch Company v. Hunting World Inc.56 In respect to
generic marks, the judge noted something in passing that is of prime
importance to our subject. He said,
‘The pervasiveness of the principle is illustrated by a series of well known
cases holding that when a suggestive or fanciful term has become generic as
a result of a manufacturer's own advertising efforts, trademark protection
will be denied save for those markets where the term still has not become
generic and a secondary meaning has been shown to continue.’57
This essentially shows that a non-generic term can become generic through
the advertising of the trademark owner himself, and he can subsequently
lose protection. This becomes of contemporary import when one looks at the
case of Google. Google, through its very own efforts, has made ‘Google’ so
ubiquitous that it has become generic. If it can be proved that the ubiquity of
usage has led to a loss of secondary meaning completely, then Google loses
protection against infringement. However, for the time being at least,
Google is still a term of wide secondary meaning, and most people still
associate it with the company, or the source itself. It seems safe for now.58

55
272 F. 505 (S.D.N.Y. 1921).
56
537 F.2d 4, US Court of Appeals for the Second Circuit.
57
Id.
58
Though Google has already started to take steps in this direction to prevent genericization.
This includes refraining from the usage of the term “googling” and making sure dictionary
references to the term google clearly mention the source being the ‘Google search engine.’
See Jonathan Duffy, Google Calls in the Language Police, BBC News Online, 20th June,

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Further, the Indian Trademarks Act, 1999, on a reading of Section 9, 11 and

19,59 shows us that generic terms cannot be registered as trademarks.
However, trademarks have to be renewed every 10 years. Hence, on the
renewal, it can be constructively assumed that the trademark will still have
to satisfy the prerequisites for registration under the act which includes,
inter alia, the fact that the trademark should not be generic. Hence, it can be
seen, that on a liberal construction of the section, even in India, trademarks
can become genericized and consequentially, registered trademarks can
lose their trademarks on genericization, albeit after the end of the validity
period of ten years.
So, the answer to our research question is deceptively simple. A trade mark
becomes genericized60 when it,
i) due to the manufacturer’s own advertising efforts or otherwise, it
ceases to have a ‘secondary meaning’ which connotes the
manufacturer himself, and
ii) comes to represent the class as a whole, and
iii) becomes the common descriptive name for the species of product,
and
iv) the manufacturer has failed to enforce his rights against infringers
effectively.
The test for genericness of a trademark is simple. If it satisfies the above
criteria, it has become genericized. If not, then it is still a valid trademark,
entitled to protection.
Research question (b): Is it possible to prevent genericization of a
trademark? And how?
As already noted whilst answering the previous research question, if due to
a manufacturer’s own advertising or due to mere inadvertence, a trademark
ceases to have secondary meaning, it becomes generic. So, the answer to
this research question is also found within this understanding. If a

2003, available at http://news.bbc.co.uk/2/hi/uk_news/3006486.stm (last visited on Jan. 30,

2012).
59
Refer to part II in this article (a. The Trademarks Act).
60
The researcher has derived this from the various principles and cases studied.

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manufacturer, producer or proprietor of a trademark can effectively

associate the secondary meaning, and make sure that the ‘common
consumer’ in his reasonable capacity, continues to associate the product
with the proprietor himself, and not with the class of products, then
genericization of a trademark can be effectively prevented.
We have also noted61 that trademark dilution claims cannot be used to help
prevent genericization of trademarks. It can be seen that there is nothing
legalese that one can do once your trademark becomes generic. Once it
becomes generic, no recourse to law will help you. Only pre-emptive
advertising can.
Research question (c): Can one be liable for passing off even though one
has used a genericized trademark? And to what extent?
This is an interesting question, but is easily answered by resorting to the
principles understood thus far. In Indian law, Sections 11 and 30 give us a
taste of the legal position on this issue. Through these sections62, as already
explained, a person can validly use a trademarked name or term, even if it is
registered, if he deals with classes of products other than the proprietor. It
also effectively allows the usage of trademarked terms on honest concurrent
use.
Section 27 is probably the most relevant here, because it disallows a person
from instituting a proceeding to prevent or recover damages for
infringement of an unregistered trademark, but at the same time does not
take away the rights of action for any claim of passing off. Hence, it can be
directly seen that even generic marks can use the same principle, not being
allowed registration.
In the Heinz Italia63 case, the court observed that even unregistered or
generic trademarks could be passed off and held that the main principle of
trademark infringement and passing off is that ‘the passing off action
depends upon the principle that nobody has a right to represent his goods as

61
Refer to Part III in this article (1. Trademark Dilution).
62
Refer to Part II in this article (b. The Trademarks Act).
63
(2007) 6 SCC 1.

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the goods of some body. In other words a man is not to sell his goods or
services under the pretence that they are those of another person.’64
Further, courts in the US65 also hold the same, upholding the purpose of the
law over its literal meaning, and giving protection where it can violate the
rights of the proprietor of the trademark.
Hence, it can be seen that the answer to this research question as well is that
yes, one can be held liable for passing off, even for a genericized trademark.
Research question (d): Do intellectual property theories allow for the
protection of generic trademarks? And if so, which theories do allow this
protection?
In this article, we have analysed four different theories of intellectual
property, their weaknesses, and the effect of the application of their
principles to generic trademarks. We have already implicitly answered this
question in the part of the article dealing with the theories, but shall
explicitly state the answers, which each theory has on genericization: -
(b) Utilitarian Theory – This theory does not allow the protection of a
trademark that has become generic. This is so primarily because this
would impinge on the public’s use of an informative word in the
language, and lead to a net social negative benefit if an exclusive
right is granted.
(c) Labour Theory – This theory, too, does not allow the protection of a
genericized trademark. This is due to two reasons - Firstly, a person
is allowed to take out from the ‘common property’ a resource, and
mix his own labour with it to make it his. This does not give him a
right to the common property as a whole, but only to the particular
part he/she benefits from. Hence, once a trademark becomes
generic, it become one and the same as the ‘common property’ and
cannot be claimed in exclusivity. Secondly, the proviso to the theory
deems that this appropriation from the commons should not
adversely affect the interests of other members of society. Granting
exclusive rights to genericized trademarks affects a person’s

64
Id.
65
Refer to Part II in this article (2. US).

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 Genericide: When a Trade Mark becomes Too Popular

interests in the sense that it deprives him/her of the usage of a term

in their language.
(d) Personality Theory – This theory does allow for the protection of a
genericized trademark. This is because it associated the trademark
with the will of the person, and hence deems it a moral right as
integral to a person as the will itself. It affords no compromises on
the same, and this primacy to the will of an individual would lead to
the inevitable conclusion that a trademark, even if genericized,
would stay protected under this theory. At the same time, however,
another interpretation of this theory would lead to the conclusion
that if a person publicises his/her trademark, this essentially amount
to a forfeiture of his exclusive rights in the same, and that he cannot
now demand protection. But many do not accept this interpretation.
(e) Social Planning Theory - This theory, too, does not allow the
protection of a genericized trademark. Being based largely on a
conception that envisages the promotion of a ‘just and attractive
culture,’ this theory inherently subjugates the rights of the
individual to society’s interests. It too will prefer to disallow
exclusive rights to genericized trademarks, sing the same logic that
utilitarianism does in doing so.
IV. CONCLUSION

As has been seen, the genericization of trademarks is a natural process, and

largely independent of the law. We have countless trademarks, which have
become generic over time, and many more in the process of becoming so.
We have further seen the factors that make a trademark generic, including
the loss of secondary meaning, and the formation of a common descriptive
name. We have analysed the law in India as well as in the US, noting the
marked similarity on their positions in the law.
Most importantly, we have analysed, understood and adapted various
principles, which allowed us to answer our research questions above.66
These include the principles that it is possible to prevent genericization of
trademarks, because certain steps can be taken by proprietors to prevent
genericization, though this does not include recourse to trademark dilution

66
Refer to Part III in this article (3. Scrutiny).

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suits. We have noted that a person can be held liable for passing off on a
genericized trademark.67 We have also understood that many intellectual
property theories do not allow for the protection of generic trademarks.

On the whole, we notice that popularizing one’s trademarks can be a

double-edged sword. It does, of course, lead to the positives of making your
brand and, consequentially, your product, figure more prominently in the
public’s consciousness. In can, however, also lead to the complete
annihilation of your trademark. Trademark owners hence have to tread a
fine line between popularity and genericide.

67
This, however, has limitations such as usage in good faith, concurrent use before the
existence of the secondary meaning etc. as already explained in the article.

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