Preventing and responding to trademark genericisation

One of the important revisions in the new Trademark Law implemented on 1 May 2014 concerns the risk of cancellation and the limitations on the safeguarding of rights when a registered trademark becomes genericised. This again pushes the hot issue of “trademark genericisation” to the forefront.

Trademark weakened

As the term suggests, trademark genericisation is a phenomenon where the distinctiveness of a trademark is weakened and gradually becomes the generic name of the specific goods. Numerous trademarks that were famous for a time have tasted the bitter lesson of trademark genericisation, e.g. Aspirin, Thermos, Walkman, Jeep, and 优盘 (the Chinese characters for USB drive). It is the author’s opinion that there are three main reasons leading to trademark genericisation.

Inherently weak distinctiveness of the trademark. With a view to making their trademark appealing and seeking to draw a connection between the trademark and the goods or services for which it is designated, some enterprises will select, at the outset when designing the trademark, a representation that indirectly describes or hints at the product or the raw materials contained therein, resulting in relatively weak distinctiveness and opening an avenue for future genericisation of the trademark.