{"id":3338,"date":"2021-02-02T16:30:10","date_gmt":"2021-02-02T16:30:10","guid":{"rendered":"https:\/\/curell.com\/?p=3338"},"modified":"2022-10-13T18:31:24","modified_gmt":"2022-10-13T18:31:24","slug":"when-a-trademark-is-genericised","status":"publish","type":"post","link":"https:\/\/curell.com\/en\/when-a-trademark-is-genericised\/","title":{"rendered":"When a trademark is genericised"},"content":{"rendered":"
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\"\"<\/p>\n

\u2013 \u00a0\u00a0 Get me a kleenex<\/em>, a\u00a0band-aid<\/em>\u00a0and an\u00a0aspirin<\/em>, please. I\u2019ve cut my finger with a\u00a0post-it<\/em>\u00a0while I was labelling the\u00a0tupperwares.<\/em><\/p>\n

All these words that serve as nouns in the simulated conversation are part of our everyday language. However, we rarely realise that we are using brand names to designate a product in a generic way, even if the specific product we are referring to is not manufactured by the trademark holder. For example, consumers often call tissues \u201ckleenex\u201d, even if they do not come from Kimberly-Clark Worldwide, Inc, the owner of the trademark \u201cKleenex\u201d\u00ae.<\/p>\n

For this reason, many owners face a daily struggle, sometimes arduous, to prevent the use of their trademark from becoming customary in the specific market sector in which the sign operates and to be able to preserve their trademark rights vis-\u00e0-vis the success acquired by their product or service, made known through their brand name. In the absence of such a struggle, the protection of the trademark may be lost, and its name may become a usual or generic term, as has already happened in Spain with trademarks such as \u201cGanchitos\u201d (Judgment of the Barcelona Provincial Court No. 557\/2004 of 21 December 2004), \u201cBio\u201d (Judgment of the Supreme Court -Civil Division- of 22 December 2008 No. 1229\/2008) or \u201cAftersun\u201d (Judgment of the Barcelona Provincial Court No. 378\/2018 of 6 June 2018). In these cases, the trademark is genericised.<\/p>\n

A trademark becomes genericised when its name becomes in trade the word that usually designates the product or service for which it is registered (Article 54.1 b) of the Spanish Law 17\/2001, of 7 December, on Trademarks). This can occur for two reasons:<\/p>\n