If you're not careful, the name of a new product can be too well-used. John Hackett of A J Park guides businesses on the first steps to registering a trade mark

Recent commercial history has some cautionary tales for companies tempted to let their brand names take care of themselves.

Registering your brand as a trade mark gives you the right to bring an action against an unauthorised party who uses the same or similar brand on the same or similar products or services as covered by your trade mark registration.

If you have a registered trade mark for APEX for prepared food products, cereals, biscuits, bread and confectionery, and an unauthorised party uses CAPEX on cakes, they will probably be held to be infringing your trade mark registration.

But, what happens when you have developed a novel product and attach a new brand name to it? Consider the SONY WALKMAN analogy.

Sony Kabushiki Kaisha, of Japan, developed the first portable audio cassette player. It came up with the brand name "WALKMAN", and applied to register it worldwide. It eventually registered the name "WALKMAN" for electronic products, and started marketing the new product as a SONY WALKMAN.

Unfortunately, it did not initially adopt a descriptive name for the product at the same time as it developed the new brand name.

Sony further compounded the problem by marketing its new product under the well-known SONY brand, with "WALKMAN" effectively being relegated to the descriptive term for the new product. At this stage, the use of "WALKMAN" as the stand-by description of the product was not a problem. Sony was first off the rank, and there were no competitors. All was fine until Sony's competitors saw this revolutionary concept and decided to manufacture and market their own portable audio cassette players.

As Sony had no patent on the new product, and probably could not have obtained one anyway, it could do nothing when the mere concept was taken and turned into competitors' branded products.

What could the trade and public call portable audio cassette players? The obvious answer was "WALKMAN". Instead of it being a proper noun (trade mark), it became a common noun for the product. Soon, everybody was referring to all different manufacturers' products as WALKMANs, and Sony started to steadily lose sales.

What could it do to retrieve its trade mark? First, it had to come up with a description to take the place of "WALKMAN". Sony chose "personal cassette players". It started advertising its product as "SONY WALKMAN? personal cassette player".

Second, the company had to educate the trade and public that WALKMAN was a registered trade mark, and could not be used as a descriptive term for the product. The proper description was "personal cassette player". Sony published warning notices in newspapers advising the public and trade that "WALKMAN" was a registered trade mark and that continued misuse of it as a generic name would constitute an infringement of its registered trade mark.

Slowly, the trade adopted the term "personal cassette player" to describe the product in advertising and in-store promotions. Finally, after several years, "WALKMAN" became re-established as a registered trade mark.

Sony's story illustrates the good and bad aspects of your brand becoming generic. Initially, while there is no competition in the marketplace, it hardly matters that your brand becomes the accepted description for the new product. Those are the good times. However, when your competitors can openly come in and manufacture the same product and brand it with their own registered trade mark, they will be able to use the description, for instance, "SANYO walkman". The trade can use it in advertising and in-store promotions, and the public will all use the term "Walkman".

Language evolution

This is when it starts becoming bad. The English language is littered with previously well-known brands having become generic. It's a way that language evolves. In the Collins Concise English Dictionary (2nd edition), the following listings are noted:

escalator - a moving staircase consisting of stair treads fixed to a conveyor belt (originally a trade mark).

gramophone - a device for reproducing the sounds stored on a record (originally a trade mark).

transistor - a semiconductor device with controlled current flow; a transistor radio (originally a trade mark).

On the other hand, terms such as Thermos, Lilo, Cheddar, Champagne, Dolby, Plasticine, Sellotape, and Formica are listed as proprietary names (trade marks), despite having often been misused and confused as generic descriptions.

First steps

How do you avoid your valuable trade mark becoming the generic description for the product?

1. When a new and revolutionary product is developed, and even before a new brand name is created, decide on a description of the product to be used as the generic name, that is, one that all competitors will eventually use, but not the one that will eventually be exclusive to your organisation.

For example, Rollerblade Inc should have called their new product an "in-line skate" from the start, and then applied the "ROLLERBLADE" brand to it. The correct manner of presenting it would have been "ROLLERBLADE? in-line skates".

In the United States, Kleenex Corporation refers to its product as "KLEENEX-branded facial tissues". This leaves no doubt that "KLEENEX" is the brand or trade mark.

2. Always use the brand name in a way that visually distinguishes it from the description, for instance, in bold capitals or in a distinctive logo format, with the ? symbol (once registered as a trade mark), followed by the description in lower case, and preferably on another line. Use of J is acceptable, but this does not indicate a registered trade mark. It merely shows that somebody is claiming proprietary rights in that name.

3. It follows that you should ensure your brand name is registered as a trade mark. This is a relatively straightforward exercise. However, it is best to contact somebody who has expertise in the area of trade mark protection to ensure that full protection is obtained not only for the current situation, but also to take into account future strategies.

4. Ensure your marketing and sales staff never use the brand name generically, for instance, they must say: "We have 20 Walkman-branded personal cassette players in stock". Proper usage internally is the most important place to start to avoid your brand name becoming generic.

5. Actively police any misuse of your brand name being used generically. Initially, a relatively polite but firm letter should be sent out, pointing out that the brand name is a registered trade mark, and that a lot of time, effort, and money have been put into developing it. This is more educative than threatening. If the misuse persists, your trade mark lawyers should be called in to send the next letter. Generally, the initial approach stops the offending.

Following all the above steps will ensure the longevity of your brand name, and you will avoid having to take action against unauthorised use of your registered trade mark as a generic term.

It is a very costly exercise litigating for something that is essentially yours, and which, with a little more care and attention, would not have slipped into the public domain as a generic term.

Initially, it is good for your brand name to be known as a generic term for the new product you are marketing, but it will, in the long term, be bad for business once your competitors make the same product and use your brand name as a description.

This is a general summary only and should not be taken as a substitute for specific advice.

John Hackett is a partner of the specialist intellectual property firm A J Park and is based in the Auckland office.

Web site:A J Park
E-mail: jhackett@ajpark.co.nz

March 2001