BRAND NAMES/TRADEMARKS VS GENERIC TERMS: ARE THEY PROTECTED?


 BRAND NAMES/TRADEMARKS VS GENERIC TERMS: ARE THEY PROTECTED?

When last did you visit Shoprite (a shopping mall) or go to Silverbird (the Cinema) or eat Indomie (noodles) or Google a word (use a search engine)?

What is a trademark?

A trademark is a sign that is used to identify particular goods and services as those produced or provided by a certain person or business. It helps to distinguish goods and services produced by one business from similar ones provided by another.

For example, “GT BANK” is a trademark that relates to services (innovative banking and financial services).

Please find below the legal regime for the protection of Intellectual Property Rights in Nigeria.

Nigerian Copy Right Act, Cap. C 28 Laws of the Federation of Nigeria 2004

Patents and Designs Act, Cap P2, Laws of the Federation of Nigeria 2004;

Trade Marks Act, Cap. T13 Laws of the Federation of Nigeria 2004;

Trade Marks Regulations; and

Merchandise Marks Act Cap. M10 Laws of the Federation of Nigeria 2004

 

Distinctive Names

The first asset in any great business is a good name. It should be registered as a trademark. A trademark must be distinctive and capable of distinguishing the goods or services with which it is used.

A trademark is usually a word, but it can also be a logo, an email address (folawusu@yahoo.com, a tag line “Just Do it”

Functions of a trademark

They usually; help consumers identify and distinguish products or services.

 

How is a trademark protected?

The most common and efficient way of protecting a trademark is to have it registered.

Why protect trademarks?

It provides business people with a remedy against unfair practices of competitors.

Most companies are always trying to make their brands household names.

But when a trade mark is being used as a general term to refer to all goods and services in its class, that trade mark can be said to be a genericized trade mark.

 

The Innovation Perspective

I.P. Lawyers would say this process is called “genericization”. At the very least companies must juggle their quest for brand recognition with the fear of brand dilution, leading to trademark loss or devaluation.

 

Brand Names can be declared Legally Generic after…

A company sues another firm for using its name and the case goes to court and the trademark is said to be genericized even though it was initially distinctive but has changed in meaning to become generic.

 

What if trademark protection is lost…?

Microsoft vs. Apple

Microsoft is challenging the “App Store” name. Apple first applied for the trademark in 2008, shortly after launching the App Store for the iPhone. Microsoft is seeking to thwart Apple’s claim to the “App Store” name.

Protecting your brand from becoming Generic

What can Brand owners do to protect their brand and prevent it from becoming generic? That is a discussion for another day.

Conclusion

In Nigeria you probably won’t lose your trademark because your mark has become generic. However you would probably still suffer the business consequences that would arise from the weakness of your trademarks.  As a trademark owner, you still have to actively protect your trademarked name. That means using it consistently and protecting it against infringement and from becoming a generic term.

Perhaps our trademark laws need to be amended such that a trademark owner loses his trademark once his trademark becomes generic as generic terms should continue to be available for use by all without fear of reprisal by a trademark owner especially one that made or watched or his trademark become generic.

 

Olufola Wusu Esq. © 2012

Lead Partner Megathos Law Practice

He can be reached at folawusu@yahoo.com

Copyright © 2012

Lead Partner with Megathos Law Practice

Okay let’s get started…

Your thoughts anyone?

Legal Disclaimer

by Olufola Wusu Esq

(1) No advice

This note contains general information about [law and legal practice]. The information is not advice, and should not be treated as such.

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2 Comments

Filed under Intellectual Property

2 responses to “BRAND NAMES/TRADEMARKS VS GENERIC TERMS: ARE THEY PROTECTED?

  1. Amedar Consulting

    …can definitely see your expertise…

    The sector hopes for even more passionate writers like you…

  2. SarandeepKaur

    Trademarks are face of your business and also a marketing tool. World’s most famous and big brands selected a brand name and a special trademark for their businesses. Trademark Genericide with a famous adage and it goes like – too much of anything is good for nothing. When a brand name becomes too popular and people start using it very frequently for a product or a particular task then the manufacturer of the product loses his products relevancy in market place. When this happens the particular trademark becomes generic term.
    For example, Xerox Corp. sells printers and photocopying machine. The brand has become so popular. People use to say – please Xerox these papers instead of saying please photocopy these papers.
    But prevention of trademark Genericide is very important for the company owners from the very beginning of their establishment of their business. Today I came across this amazing new website were i read about this more about avoiding trademark generic.

    I think you should check this site too. You will find some interesting information there.
    For more information and registering your trademark please do visit:

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