The decision to create, register and implement a trademark in the market is, in a way, comparable to the adventure of parenthood: both involve planning, perseverance, long-term – I would say lifelong – commitment, as well as the ability to adapt to change and different stages:
- Planning and preparation: before launching a trademark, we create a philosophy, a trademark strategy that includes the definition of values, vision and mission. We project our trademark, with great enthusiasm, we imagine how we would like “our baby” to be.
- Creation and development: in this phase, we take one of the most important decisions: we choose the name and the visual identity. We start developing the product, making sure that it meets the ever-changing and often unpredictable expectations and needs of the market. Throughout this “infancy” stage, we have devised and established its foundations, we have protected it through registration, our trademark is ready to start its promotion and advertising.
- Establishment and growth: the trademark establishes itself in the market, builds its reputation and customer trust, expands and diversifies its presence in different sales channels. We are in the “adult stage”, it seems that it can start to fly on its own.
Even at this stage, our trademark will require our attention and care to avoid one of the greatest dangers: its vulgarisation.
What is the vulgarisation of a trademark?
The vulgarisation of a trademark occurs when its name becomes the word that usually designates the product or service for which it is registered, especially affecting trademarks with a certain reputation and word marks.
At some point, we have all offered a Kleenex, ordered some Kikos with our afternoon beer and stuck post-it notes wherever our memory fails us.
As consumers, we have incorporated into our everyday vocabulary words that were originally born as trademarks, we have appropriated them to designate a general category of products, thus depriving them of the possibility of exercising the function for which they were created: the distinction of a product through the identification of its corporate origin. This is the essence of any trademark. Other examples of trademarks that have been vulgarised or are in the process of being vulgarised are Thermo, Yoyo, Jacuzzi, Jeep, Tippex, Bamba, Lycra, Papel Albal or Minipimer, among others.
The process of vulgarisation is a real danger that threatens trademarks and can even lead to their revocation and the consequent total loss of the owner’s rights.
What are the requirements for revocation by vulgarisation?
For the declaration of revocation, both the Law and the Jurisprudence of our Courts require, firstly, that the name of the trademark has become the generic term to designate the product – an objective requirement – and, in addition, a second requirement of a subjective nature must be met: that the vulgarisation is caused as a consequence of the activity or inactivity of the trademark owner.
What can we, as owners, do to avoid the process of the vulgarisation of a trademark?
The care, monitoring and proactivity that we, as owners of the trademark, carry out with regard to its implementation in the market is extremely important. It is on us to avoid the process of vulgarisation and subsequent expiry, or even to reverse it in cases where it has already begun.
To this end, we must control the use of the trademark itself, in our advertising and marketing, media and social media; avoid its inclusion in dictionaries or control it by requiring the indication of its status as a registered trademark. INTA, the International Trademark Association, recommends the so-called ACID test:
- Adjective: the trademark should never be used as an adjective.
- Consistent: use in a homogeneous way.
- Identifier: use with the ® symbol.
- Distinctive: after a noun, use in italics, in inverted commas or in capital letters.
We must also pay attention to the reception and dissemination of our trademark by consumers and the use made by the rest of the companies in the sector, in order to be able to act at the first signs of vulgarisation. This can be done through advertising campaigns or by demanding correct use from our competitors by sending injunctions as a prior step to civil infringement actions.
It is extremely important to identify and compile the measures we undertake to preserve the unique, singular and distinctive character of our trademark, to facilitate its accreditation in an eventual revocation procedure.
In short, we must carry out a continuous audit of any use of our own or others’ trademarks, ensuring the preservation of their distinctive and identifying capacity in order to avoid their genericity, dilution and vulgarisation.
In relation to what we indicated at the beginning of this article, it is true that the growth and establishment of our trademark requires our attention, perseverance, updating and monitoring. But just as in parenthood, our efforts will generally culminate in success and in the satisfaction of seeing our objectives and hopes crystallised in the final result of our company.
At PONTI & PARTNERS we will be delighted to accompany you throughout this process, from the birth of your trademark, to the monitoring and achievement of its consolidation and positioning in the market, enjoying at all times the full exercise of your exclusivity rights.
Article by Cristina Margalef.