November 2005
Is Google becoming like a Hoover or Xerox?
In order for a trade mark to eligible for registration and also in order to remain registered it must not be generic. That it is to say it must not become a word that is used to describe the function of the product or a verb regarding use of a product. Arguably the word Google has fallen into every day language often used as a verb to describe the use of a search engine for example many people will “google” a contact before a meeting thereby using the term as a verb regardless of which search engine they actually use. Similar examples are “biro” for a ball point pen regardless of whether the pen in question is an actual Biro or another brand or Hoover which is used in both noun and verb form to describe other brand of vacuum cleaner and also to describe the action of doing the “hoovering”.
Xerox experienced similar problems and ran a series of adverts expressly denying the verb use of the word with the slogan “you can’t xerox a document but you can copy it using a Xerox brand copying machine” .
Google have apparently already written to several publications and dictionaries in order to try and avoid the word being used generically or, even worse, as a dictionary listed verb. It is not clear whether they will start an advertising campaign but it does look like a wise option in order to stem a tide of unstoppable trade mark infringements
BRIFFA Comment
This is a good example of where it becomes vital to continue policing your trade marks even once they have become registered. Registered trade marks can be the subject of several risks post registration. Some examples of such risks are below.
Infringement: If a third party infringes your trade mark it is up to you to do something about it. Using a watching service can ensure that you are made promptly aware of any new applications that may threaten or infringe your mark.
Revocation: if a mark is not used for any continuous five year period following registration it is eligible for revocation by reason of non use.
Removal by reason of having become generic. As per the example above a generic mark may mean you could lose your trade mark rights which in a brand with the value and goodwill of Google would be catastrophic.
Briffa can advise you on these and any other risks facing your trade mark application or registration.