Internet Newsletter for Lawyers
November/December 2006, by Delia Venables

Google is now one of the world’s best known brand names. So why does Google not want us to google any more?

When it was recently announced that the word google had entered the dictionary as a word in common usage it was, in one sense, a sign of the huge success of the behemoth search engine. In trademark terms, however, it signalled a potential problem which could prove fatal to the validity of the trademark. Google’s concern is that the more we google (used as a verb), the greater the risk that Google will lose trademark protection for the name.

This is why Google recently moved to issue new guidelines as to how their name should be used with examples of appropriate and inappropriate use including these:

• He ego-surfs on the Google search engine to see if he's listed in the results. Appropriate.

• He googles himself. Inappropriate.

• I ran a Google search to check out that guy from the party. Appropriate.

• I googled that hottie. Inappropriate.

Despite the light-hearted approach, Google is pursuing a serious policy to defend the trademark protection for its brand.

The issue has become known as genericide. A genericized trademark is a trademark or brand name which is widely used colloquially as a noun or verb in relation to a particular product or service. Examples of other marks which were originally created and used as trademarks, but which have subsequently become synonymous with the common name of the relevant product or service include aspirin (coined by the Bayer company of Germany), hoover (the brand name of the Hoover Company for vacuum cleaners), cashpoint (a brand name belonging to Lloyds TSB) and escalator (a trademark of the Otis Elevator Company). Sony’s Walkman brand also suffered this fate in Austria when the Austrian Supreme Court (Sony Europe v Time Tron Corp) decided that the word is now used to describe all portable cassette players.

Trademark revocation

Under s 46 of the Trade Marks Act 1994, a trade mark can be revoked on a number of grounds arising after registration. By s 46(1)(c), one of the grounds on which a trade mark can be revoked is where it has become generic. The sub-section says that a registration may be revoked if, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered. There is a similar provision in the CTM Regulation (Council Regulation 40/94/EC) in relation to Community Trade Marks (Article 50(c)).

An application for revocation could be made by any person; this could be, for example, a competitor or person whom the trade mark owner alleges has infringed his rights.

Avoiding genericide

• adopting a trade mark policy detailing how the mark should be used – for Google’s trademark policy see www.google.com/permissions/guidelines.html . This says that when you use any of Google’s “Brand Features”, you must always follow the Rules for Proper Usage which may include requirements as to the size, typeface, colours, and other graphic characteristics of the Google Brand Features. This policy should ensure that the trademark is used as an adjective (e.g. “a WALKMAN personal stereo”), and never as a noun (e.g. a Walkman) or as a verb (e.g. “to google”);

• monitoring how the mark is used by third parties, competitors and the media and where necessary taking steps to prevent misuse by (for example) writing letters to editors pointing out inappropriate use.

  In this respect, Article 10 of the CTM Regulation gives some assistance to brand owners. This says that if the reproduction of a CTM, in a dictionary, encyclopaedia or similar reference work, gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work must, at the request of the proprietor of the CTM, ensure that the reproduction of the trade mark, in the next edition of the publication, is accompanied by an indication that it is a registered trade mark. There is no equivalent provision in the Trade Marks Act.

  Such letters should not threaten any kind of legal action as (save under Article 10) the trademark owner does not have any legal right to prevent inappropriate use of its marks (which is not by way of infringement); they are in the form of advice, requests, guidance which editors and media owners could observe or ignore as they choose. The PR implications of such letters should also be considered to avoid any suggestion of big-brand bully boy tactics being used, which could backfire on the brand-owner;

• whenever appropriate, using trade mark symbols (® for registered marks only) and notices (for example, "Google is a registered trade mark of Google Technology Inc.");

• running a campaign to educate people in correct usage of the mark to prevent the trademark being used as a synonym. For example, Xerox ran an extensive marketing campaign advising consumers to "photocopy" instead of "Xeroxing" documents.

  While for a company like Google, it may be a losing battle to prevent the name becoming generic, so long as they take reasonable action to try to prevent it, so that any genericization is not “in consequence of acts or inactivity of the proprietor”, then they may be able to prevent the trademark registrations being revoked. In the Austrian Sony Walkman case, it was material to the decision to revoke the name that Sony had not challenged the inclusion of the word “walkman” in an Austrian dictionary.

The lesson for brand owners

Nigel Miller is a Commerce and Technology partner at City law firm Fox Williams LLP, www.foxwilliams.com.

Email: nmiller@foxwilliams.com.

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