How to Prevent a Trademark from Becoming Generic (Trademark Genericide)?

The concept of a trademark becoming generic essentially refers to the loss of its distinctiveness over time in relation to the goods or services it designates, resulting in its use by the public as the name of those goods or services. For detailed information on generic trademarks, you may refer to our article titled What Is a Generic Trademark?

When a trademark loses its distinctiveness and becomes a generic term, the trademark owner’s rights in the mark come to an end, and all the efforts and expenses invested in the trademark are wasted. Therefore, the trademark owner will seek to prevent the mark from becoming generic. In this article, we will address the question of how to prevent a trademark from becoming generic.

What Rights Does the Trademark Owner Have to Prevent the Trademark from Becoming Generic?

The trademark owner has various rights to prevent their trademark from turning into a generic term.

1. Rights Based on Trademark Law

   Article 8 of the Industrial Property Code grants trademark owners two alternative rights to prevent registered trademarks from being used in dictionaries, encyclopedias, or similar reference works in a manner that creates the impression of being a generic name:

   
   

   • The right to request that the trademark be indicated as registered

   • The right to request the complete removal of the trademark from the work

     
     

   The request for complete removal of the trademark may only be directed at the publisher; if it is not fulfilled, the trademark owner may pursue legal remedies.

   The purpose of this provision is to prevent the trademark from becoming generic. Although different opinions exist in doctrine with regard to well-known marks, it is accepted that if a trademark is used as a verb, adjective, or adverb without indicating that it is registered, its distinctiveness will be impaired and the trademark owner may benefit from protection under Article 8 of the IPC.

   This provision is derived from the former Decree-Law No. 556 on the Protection of Trademarks and parallel provisions in EU legislation. If the trademark owner makes use of these remedies, the mark cannot be cancelled on the grounds that it has become generic.

   Indeed, in the “Teflon” decision, the cancellation request was rejected due to the trademark owner’s active protection efforts.

   The concept of “reference work” includes not only dictionaries and encyclopedias but also written sources such as catalogs and yearbooks, as well as online platforms like Wikipedia and Ekşi Sözlük.

2. Rights Based on Unfair Competition

   As explained above, Article 8 of the IPC applies only to registered trademarks. Therefore, a trademark owner whose mark is not registered cannot rely on this provision to prevent the mark from becoming generic, and may instead invoke the provisions on unfair competition.

   Under the Turkish Commercial Code (TCC), “unfair competition” is defined as deceptive and dishonest practices or commercial conduct that affect relations among competitors or between suppliers and customers.

   If a trademark is used as a generic term by commercial enterprises such as newspapers, magazines, or by merchants, the provisions on unfair competition under the TCC must be applied. In contrast, if such use is by persons who do not hold the status of merchant, the provisions of the Code of Obligations (CO) shall apply.

   To ensure that a trademark in which the owner has invested labor and capital does not fall outside trademark protection, both the repealed Decree-Law No. 556 on the Protection of Trademarks and the Industrial Property Code provide the owner with rights to prevent the trademark from becoming generic. Accordingly, the trademark owner possesses rights based both on trademark law and on unfair competition law to prevent genericide. If the owner demonstrates the necessary and effective effort to prevent the mark from becoming generic, cancellation of the trademark on the grounds of genericism will not be possible.

   
   

➡️ However, since the circumstances of each case differ, it is important to consult a specialized attorney to protect your trademark and prevent potential risks.