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The death of a trade mark

When brands become too popular, they could risk losing their trade mark protection under Australian IP law.

When filing their Australian trade mark registration, every entrepreneur has visions of success. That is not always a good thing. While growing a brand and becoming well-known are excellent goals, too much fame can be potentially harmful.

Why is such notoriety a bad thing? A brand or product that becomes so commonplace that it is the de facto name can actually be stripped of its protection under Australian intellectual property laws in a process known as genericide. Let's take a look at this phenomenon and how it occurs.

A shoe-in for genericide

Everyone the world over has heard of ugg boots. From sunny beaches to snow-covered city streets and school campuses, these iconic sheepskin boots are everywhere. This popularity is, to a great degree, the reason that so many different companies are able to manufacture and sell these boots.

There are 203 registered trade marks containing the word ugg in Australia.

Conspicuously, the word ugg used on its own is not a trade mark. According to a search of the Australian Trade Mark Online Search System (ATMOSS), there are 203 registered trade marks containing the word ugg filed under class 25 – clothing, headgear and footwear.

This is because ugg is a proprietary eponym – a product name that has become so commonly used that it is accepted as the common name instead. When this happens to a product that is already registered as a trade mark, Australian IP law has a mechanism in place for removing that protection and demonopolising the item name.

Genericide and Australian intellectual property law

The process of stripping a trade mark for a commonly used term is outlined in sections 24 and 87 of the Trade Marks Act 1995.

Section 24 notes that, if a trade mark contains or entirely consists of a designation that becomes commonly used in its associated field, the registered owner can lose all rights to it. Making such a determination is left up to a prescribed court, which will also determine exactly on which date this genericisation specifically occurred. The actual amendment or revocation of that trade mark is provided for in section 87.

When companies see that they're in danger of losing their brand to genericide, they can take steps to raise awareness and emphasise their rights under trade mark law. Such campaigns historically have had a varying degree of success.

For more information about trade marks and other IP services in Sydney, contact Alder IP today.