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What a Tragedy to Become a Generic Trademark



It will be definitely a tragedy once a created registered trademark becomes a generic term, which will not only cannot be enforced against any unauthorized use or registration but will also be vulnerable to revocation (cancellation) under the Trademark Act.

 

A trademark will lose its function of identifying a particular source if it is used improperly by the proprietor of the trademark or the proprietor of the trademark allows third parties to use the trademark as a generic term for the goods. This will constitute the grounds for revocation under Subparagraph 4 of Paragraph 1 of Article 63 of the Trademark Act. For this reason, use of a registered trademark as a name, byword, or synonym for the product should be avoided. Generally, a registered trademark becomes generic because the product bearing the trademark is so novel and popular that consumers simply use the trademark to refer to the product when they make the purchase. In other instances, businesses use the registered trademark to refer to similar products that they launch and, over time, the trademark becomes the byword for the product and is commonly used by consumers or businesses. Such use will cause a trademark to lose its function as a source indicator, and consumers can no longer use it to identify the source of the product.

 

One of the ways to prevent a registered trademark from becoming a generic term for the designated goods is to use the trademark together with the product name, thus making the trademark serve as an adjective to indicate (describe) the source of the product.  Moreover, when a new product is successfully developed, and especially when it is the first of its kind in the industry, the company should clearly inform consumers of the product name when launching the product, so as to prevent consumers from simply using the trademark to refer to the new product when they do not know what to call it.  Meanwhile, whether a trademark has become a generic term for a product is judged mainly by whether the impression left by the trademark and its primary meaning in the minds of consumers is the name of the manufacturer or that of the product. Therefore, wherever possible, a registered trademark should be used in a way which is distinctive enough to grab the consumers’ attention and make them recognize it as a trademark. Moreover, a trademark may, if registered, be displayed with the words “registered trademark” or the internationally used symbol ® (the letter R enclosed within a circle) for registration, which can be a way to reinforce consumers’ impression of the trademark, to inform them that the trademark is a registered one, and to remind the third parties from infringement, so as to maintain trademark rights.

 

In addition, for the proprietor of the trademark, taking the initiative to stop others from using its registered trademark improperly is also an important means of protecting its own trademark rights.
 


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