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From Trademark to Generic Designation and Back Again

by Jevgenijs Fortuna  Email

 

Over the last few decades, some trademarks have lost their distinctive character and turned into generic designations due to misuse or other reasons. There are a great number of examples of such process of conversion of an original mark into a generic designation: "Linoleum," "Escalator," "Nylon," etc. Probably many trademark practitioners have their own examples of such situations occurring in their country. Turning back to the 70s and 80s, it may be noted that in the Soviet Union, new generic designations of similar types appeared, for example, "Prima," "Astra," "Kosmoss," "Elita," for cigarettes, "Rebuss," "Serenada" for confections, "Tarhun," and "Veseliba" for soft drinks.

The fact that in the Soviet Union trademarks were normally distributed among manufacturers of similar products by decisions of branch ministries accounted for such mass-scale conversion of trademarks into generic designations. Hence, for example, different manufacturers produced "Prima" cigarettes in the territories of several republics of the Soviet Union. Moreover, all such manufacturers used one and the same verbal designation, "Prima," and identical pack design. As a result, the trademark actually lost its distinctive character inside the Soviet Union; therefore, consumers recognized goods of different producers not by the product trademark (label), but by the producer's company mark (house mark).

Yet, after the Soviet Union disintegrated, political and economic situations changed; most of the former Soviet republics adopted an absolutely new legal base and had a new life to live. From that moment on, the fate of such trademarks as "Prima" and "Rebuss" changed dramatically: a reverse process began - the process of conversion of a generic designation into a trademark*. In other words, as free commodity exchange between former republics ceased, in each currently independent republic, use of such designations became concentrated in the hands of one enterprise. For example, in Latvia the consumer cannot just encounter "Rebuss" chocolates of another origin than those made by the Company "Laima." Now, such designations have the ability to distinguish goods of one company from those of other companies, at least inside the territory of separate independent countries (e.g. Latvia). Inter alia, the process of change of consumer generations underway is to be taken into account: i.e., main consumers of products marked by the "Rebuss" trademark (or, to put it simply - children) are likely to obtain knowledge of the Soviet period from stories of adults and history books already. Consequently, they perceive such designations as "Rebuss" as trademarks from the very start.

Both processes described may apply to indications of geographical origin becoming generic designations too. This issue is especially topical among manufacturers of alcoholic products and dairy products (in some countries such designations as "SHAMPANSKOYE" [CHAMPAIGNE], or "ROSSIYSKI SIR" [RUSSIAN CHEESE] are recognized as generic). It is not easy to return the "SHAMPANSKOYE" designation used for wines to its real owners - wine-makers of the Champagne province, when such arguments in opposition state that "although this designation complies with the definition of indication of geographical origin, it has lost its original meaning in the territory of the respective country and has become a generic name for types of goods."

Nevertheless, one may assert that the label "generic" can hardly be attached to any designation easily and forever. Former owners of trademarks converted into generic designations have their own means to oppose the situation, as in the case with the XEROX mark - to contribute actively to restitution of original and distinctive features of such designations.

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* A similar process may be observed concerning the "XEROX" trademark, which turned into a generic designation due to misuse once, and was used to name all copiers manufactured by different companies in all cases; however, the company owning the mark became aware of the value of its mark and undertook to change its policy of using the mark, spending great funds in order to explain to consumers that the "XEROX" designation was a trademark rather than the name of products. As a result, in the author's opinion, currently such action may be described as a success - "XEROX" designation resumed its distinctive character in many countries.

2000, Jevgenijs Fortuna

Sources:

1. O. Porohovskaya, Proceduri uregulirovanija konfliktov i ziznesposobnost institutov tovarnih znakov // Voprosi ekonomiki No. 3, 1999, p. 100-101.
2. Jevgenijs Fortuna. Par precu geografiskas izcelsmes noradem //
Latvijas Vestnesis, April 13, 2000.


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