What Is a Generic Trademark?

Trademarks are among the most important elements that enable a product or service to be distinguished in the market. However, over time some trademarks begin to be used as the name of the product or service to which they belong, thereby losing their distinctive character. This situation is referred to as “genericide” or “the trademark becoming a generic name.”

In this article, the concept of the Generic Trademark, the abstract and concrete aspects of distinctiveness, the use of a trademark as a generic term, and the legal criteria considered in this process will be examined.

A. Trademark

The Industrial Property Code (IPC) does not provide a direct definition of a trademark; however, Article 4 of the IPC lists the signs that may qualify as trademarks. Accordingly, a trademark is a sign that serves to distinguish the goods or services of one undertaking from those of others. The primary purpose of a trademark is to differentiate the goods or services to which it belongs from other goods or services of the same kind.

B. Generic Trademark

Neither the IPC nor the repealed Decree-Law No. 556 contains a definition of a “generic trademark.” However, the concept essentially refers to a trademark losing its distinctiveness and beginning to be used as the name of the product or service itself.

This situation is particularly observed in trademarks that first entered the market or hold a dominant position in the sector. Consumers start referring to the product or service directly by the trademark’s name. For example, “Gillette” (razor) or “Selpak” (tissue) are registered trademarks but are commonly used by the public as product names.

C. Generic Sign

Generic signs are those that directly describe the type or nature of the product. Since they lack distinctiveness, they cannot be registered as trademarks. For example, the term “apple” describes the fruit itself and therefore cannot function as a trademark for fruit products.

Conditions for a Trademark Becoming Generic

In determining whether a trademark has become generic, it is necessary to examine the dictionary meaning of the mark, whether it is used by relevant persons and in written works as the general name of the goods or services, and whether there is another word available to designate the goods or services.

A. Loss of Distinctive Character of the Trademark

The primary function of a trademark is to distinguish the goods or services to which it belongs from those in the same field. The strength of a trademark’s distinctiveness is closely related to the characteristics of the product or service it represents. The further the sign used as a trademark is from the goods or services it designates, the stronger its distinctiveness will be. For this reason, signs that describe the goods or services themselves do not possess distinctiveness.

In cases where a trademark consists of multiple words, if one or more of those words become generic, it must be examined whether that word constitutes the essential element of the trademark. If the word that has become generic is the essential element, it can be said that the trademark has lost its distinctiveness in such cases.

The distinctiveness of a trademark can be classified into two categories: abstract distinctiveness and concrete distinctiveness.

1. Abstract Distinctiveness

Abstract distinctiveness refers to the inherent ability of a sign to distinguish. In other words, it is the capacity of the sign to create differentiation independently of the product or service. A sign lacking abstract distinctiveness cannot serve as a trademark for any goods or services.

According to Articles 4 and 5 of the IPC, signs without distinctiveness are refused registration on absolute grounds.ez.

2. Concrete Distinctiveness

Concrete distinctiveness refers to the distinctiveness of a sign in relation to a specific product or service.

For example, the term “Apple” is not distinctive for fruits; however, it has strong distinctiveness for technology products. Therefore, in discussions on trademark genericide, what is primarily examined is the concrete distinctiveness of the mark.

If a trademark begins to be used by consumers as the name of the product itself, it is deemed to have lost its distinctiveness. If consumers are also able to describe the same product using another term, it becomes more difficult to accept that the mark has become generic.

It is important not to confuse the concept of a trademark becoming generic with the concept of a sign acquiring distinctiveness through use.

• Becoming generic: When a trademark, over time, turns into the common name of the product.

• Acquired distinctiveness through use: When a sign that was initially non-distinctive becomes distinctive through its use in the market.

B. Use of a Trademark as a Generic Term

When a trademark is widely used to refer to the entire category of goods or services to which it belongs, this constitutes the use of the trademark as a generic term.

1. Whose Perception Is Taken as the Basis in Determining Generic Use

For a trademark to be deemed to have become generic, the perception of the relevant market sector is taken as the basis. In the “Joint Recommendation” prepared in 1999 by WIPO and the Paris Union, the concept of the relevant market sector was explained as including the current and potential customers of the goods or services to which the trademark belongs, the persons in the distribution channels of those goods or services, and those engaged in the business within the sector of those goods or services.

For example, in cosmetics and personal care products, the “relevant market” refers to the broad consumer base, whereas for dental products, only the specialists working in that field are taken into account.

Although the Recommendation stated that the perception of end consumers alone is not sufficient, the Court of Justice of the European Union has delivered different rulings. For instance, although the “Aspirin” mark belongs to Bayer, it lost trademark protection in the United States because it became a generic name. In that decision, the Court based its reasoning on whether the mark merely evoked the product in the minds of consumers.

2. Degree of Common Use

The level of use required for a trademark to become a generic term cannot be determined by mathematical ratios. Nevertheless, consumer perception is the most important criterion in assessing common use. In addition, the trademark must become generic only within its own field of goods or services. Use of the mark as a generic term in an unrelated sector does not mean that the trademark has become generic in its own field.

The transformation of a trademark into a generic term is one of the most serious risks for trademark owners. This occurs when the mark loses its distinctiveness and may result in the termination of trademark rights. However, the Industrial Property Code and the provisions on unfair competition provide trademark owners with the means to protect their marks.

➡️ To protect your trademark, prevent potential risks, and develop a strategy against genericide, you may consult a specialized attorney.