Can the popularity of a brand result in loss of trademark?
Trademark proprietors try to promote their brands so they become known and recognisable among customers, achieving greater distinctiveness and even repute. A famous brand is the dream of every trademark owner. But sometimes exceptional popularity proves damaging to the brand. Then the trademark can become eroded or genericised.
We regularly encounter words like cellophane, escalator, gramophone, heroin, hula hoop, lanolin, linoleum, nylon, thermos, trampoline or videotape without being aware that these are generic names that once were trademarks belonging to specific proprietors.
These are special situations. Erosion of a trademark most often occurs when an entirely new type of product is launched which does not yet have a name, but achieves a spectacular success because it meets a need of consumers. Then the trademark used for the product becomes used as the name for a category of products and not to identify goods originating from a specific producer. The danger is that when the trademark is thus “eroded,” the proprietor may lose the rights to the trademark and anyone will be able to use it.
Clear signals that consumers treat a trademark as a name for a category of products include writing it in lower case, using it in the plural, transliterating it into a local language (e.g. “polonising” the spelling of a foreign name), or inclusion of the word in dictionaries or other recognised publications as a common or generic noun. In some instances, this process affects trademarks for alcoholic beverages. Typically the erosion process occurs over a long period, but disputes seeking to strip the trademark proprietor of the protected rights to the name are also known to drag on for years.
Wiśniówka for all?
An example from Poland of a trademark for which cancellation has been sought due to genericisation is “Wiśniówka,” registered for spirits in 1965 (specifically cherry cordial, from wiśnia, the Polish word for “cherry”). In 1999, when the state-owned Polmos distilleries around the country were spun off into separate companies for privatisation, the Wiśniówka brand became the property of Polmos Józefów (Mazowiecka Fabryka Wódek i Drożdży Polmos in the village of Józefów near Błonie, a small city about 20 km west of Warsaw). But after 1989, other producers, not just Polmos companies, had begun to sell cherry spirits called “Wiśniówka.”
The registration of the verbal trademark Wiśniówka meant that as a rule, no one else could use or register an identical or similar trademark. But another producer that nonetheless sold vodka under this name applied to the Polish Patent Office to cancel the trademark “Wiśniówka” because the mark had lost its distinctiveness. The applicant claimed that due to the acts or omissions of the proprietor, the mark had become a designation functioning generically in commerce, merely providing information on the type of product, its composition, quality, price and intended use, and the manner, time or place of production of the goods for which it was registered.
In the applicant’s view, the trademark “Wiśniówka” had become in common use a synonym for vodka of a certain colour and taste which customers did not associate with any of the Polmos companies, and in particular Polmos Józefów. Thus customers no longer linked the mark with information about the origin of the product, but only about the product itself. To support its view, the applicant cited a number of examples of this use of the word in dictionaries, cookbooks, encyclopaedias and other publications.
This view was rejected by the Province Administrative Court in Warsaw in its judgment of 25 August 2004 (Case II SA 2379/03), as well as in the Supreme Administrative Court judgment of 9 March 2005 (Case II GSK 8/05), holding that the mere fact that the mark is sometimes used in commerce as a name for a product, and the average consumer does not associate the mark with the origin of the goods, is insufficient to find that the trademark has become genericised. This could only be shown by demographic research, which the applicant had not conducted.
The court found that the change in the information conveyed by the trademark and the development of a generic designation by the mark did not justify cancelling the protection of the trademark.
An important issue in cases of this type is to examine the behaviour of the trademark holder. If it undertakes protection of the mark, whether through the courts (by filing suit) or outside the courts (by sending warning letters or publishing announcements asserting that the designation is a protected trademark), it cannot lose its rights to the name. In this case, the holder had taken such action, and its persistence and determination in using the mark as an indication of the source of the goods, i.e. with the function of a trademark, demonstrated that it treated the mark “Wiśniówka” as an essential asset of the enterprise, preventing the mark from being held to have eroded into a generic term.
Thus a trademark can be lost through erosion only when the proprietor has neglected to defend the mark.
It should be pointed out, however, that although the “Wiśniówka” trademark was not cancelled at that time due to erosion, a competitor nonetheless did succeed later in cancelling the mark. Now there are other registrations of trademarks containing the word “Wiśniówka,” and several producers market goods under that name.
Sophia from one source alone
This position was upheld many years later in a case involving the trademark “Sophia” registered for wines, liqueurs and spirits (Sp.190.2015). Domain Menada sp. z o.o. applied for cancellation of the mark, claiming that due to many years of use by various market participants to refer to wines, tolerated by the holder, the name had entered generic use to refer to Bulgarian wines.
In the applicant’s view, for the Polish consumer the name “Sophia” is associated with Bulgaria, and a wine labelled “Sophia” is synonymous with Bulgarian wine, and thus the trademark “Sophia” is associated with the country of origin rather than a specific producer. It also argued that the presence of the Sophia brand on the market was maintained by entities other than the trademark proprietor, and if not for the activity of those third parties, the designation would have disappeared from the market. The applicant submitted photos of bottles of wine bearing the name “Sophia” marketed by various importers, printouts from websites offering wines identified as “Sophia,” examples of accounting and customs documentation connected with importation of “Sophia” wine by the applicant, as well as contracts and cooperation agreements using the formulation “Sophia type wine” or “Sophia class wine,” demonstrating that the name “Sophia” functions in the wine trade as a generic designation.
The Patent Office mentioned that in order to show that a trademark has lost its distinguishing power, the applicant must present specific instances where the name is used to provide information about the product as such, rather than as a trademark of a specific enterprise. It must also be shown that the loss of the distinctive characteristics of the mark is the effect of acts or omissions by the proprietor of the mark. Thus a causal connection must be shown between the behaviour of the holder and the erosion of the mark into a generic designation. The process of erosion of the trademark must be verified from the perspective of the relevant audience. Therefore, to assess whether a trademark has become a generic designation, the opinions of consumers and end users must be considered.
The Patent Office found that the examples presented by the applicant of use of the designation “Sophia” did not constitute merely descriptive use, nor did the evidence show that “Sophia” had become a generic name.
The evidence included labels of Sophia wines marketed by various entities. The wines bore various labels with additional graphic and verbal elements, but the main element that was repeated was the name “Sophia” in the same font. The labels did not provide information about the winemaker, but about the importer, which was listed in fine print on the back label. The variety in the graphic layout of the labels could be perceived by consumers as aesthetic changes made by the importer, which is not an unusual practice on the Polish market.
Most importantly, the main element of the labels—the “Sophia” name—was written in the same font. This most likely demonstrated that other enterprises using the name “Sophia” on the labels of the wines they imported were piggybacking on the popularity of the product consumers were expecting when they bought wine branded as “Sophia.”
Marketing of wine bearing the “Sophia” mark by numerous producers did not mean that the name had assumed a descriptive nature, because it was unknown how consumers perceived the situation. The evidence presented did not address how the Sophia brand was perceived by the final purchasers, which is essential for determining whether the mark had become genericised.
The other prong of the test for loss of the distinguishing power of a mark is to examine the actions of the proprietor of the mark. In this case, the trademark holder showed that it had taken measures to enforce its exclusive rights to the disputed trademark. It sent demands to cease and desist infringement of the Sophia trademark and filed suit seeking to stop the marketing of alcoholic beverages in Poland bearing the Sophia mark or similar marks, which demonstrated that the holder did not condone the erosion of its trademark into a descriptive term.
Even if the mark had lost its distinguishing characteristics, the active stance of the proprietor defending its mark prevented the mark from being genericised.
The owner must look out for its brand
These rulings clearly show that the best method to avoid erosion of a trademark is to effectively fight for the mark, which may include for example demanding that competitors voluntarily stop using the mark, or filing suit in the courts for trademark infringement.
So what should the owner of a trademark pay attention to if it wishes to effectively protect its mark against erosion? First and foremost, it should always use the name in its function as a trademark, combined with the ® symbol indicating that it is a registered trademark. Experience teaches that merely using this symbol often serves as an effective means warning off potential infringers, as it demonstrates that the owner of the mark is aware of its rights and ready to defend them.
Monika Wieczorkowska, trademark attorney, Intellectual Property practice, Wardyński & Partners
