The strongest brands face a peculiar danger: success so complete that the mark becomes the name of the product itself. Section 47 of the Trade Marks Act (Chapter 385) deals with it.
Section 47(1) — generic use alone is not enough
Subject to this section, the registration of a trade mark does not become invalid by reason only of the use, after the date of the registration, of a word or words which the mark contains or of which it consists, as the name or description of an article or substance.
So the mere fact that people use the brand name loosely does not, by itself, destroy the registration. The section then sets out the two situations in which it does bite.
Section 47(2) — when subsections (3) to (5) apply
There is a well-known and established use of the word as the name or description of an article or substance by a person or persons carrying on a trade in that article or substance — not being use in relation to goods connected in the course of trade with the proprietor or a registered user.
The article or substance was formerly manufactured under a patent, a period of two years or more after the patent has ceased has elapsed, and the word is the only practicable name or description of the article or substance.
Trigger (a) is about the trade, not the public. It asks whether other traders in the article use the word as its name — and it excludes use connected with the proprietor or a registered user, so a proprietor’s own loose usage, or a licensee’s, does not count against it.
Trigger (b) reflects a policy about patents. When a patent monopoly ends, competitors must be able to name the thing they are now free to make. If the only practicable name is the trade mark, the mark cannot be allowed to extend the expired monopoly by another route.
Sections 47(3), (4) and (5) — what follows
| Situation | Consequence |
|---|---|
| The mark consists solely of the word (s 47(3)) | The registration, so far as it covers the article or substance or goods of the same description, is deemed for the purposes of section 13 to be an entry wrongly remaining in the Register |
| The mark contains the word and other matter (s 47(4)) | The Court, in deciding whether the mark shall remain, may — if it decides in favour of the mark remaining — require as a condition a disclaimer of any right to the exclusive use of that word for that article or substance or goods of the same description |
| In any other proceedings (s 47(5)) | All rights to the exclusive use — of the mark, if it consists solely of the word, or of the word, if the mark contains it with other matter — are deemed to have ceased on the date the generic use first became well-known and established, or at the end of the two-year period after the patent ceased |
The rights are deemed to have ceased on the date the generic use first became well-known and established — not on the date of the judgment. In an infringement action, that can mean the proprietor had no exclusive right at the time of the acts complained of, however long the mark has been on the Register.
Section 47(4) also confirms that a disclaimer imposed under it does not affect rights of the proprietor except those arising out of the registration — the same principle as in section 23(2). Reputation-based rights in passing off are untouched.
How section 47 fits with sections 51 and 52
Time does not cure this problem. A Part A registration is protected by section 51 after three years and by section 52 after ten — but both leave open the question whether the mark is distinctive at the commencement of the proceedings. A word that has become the name of the article is, by definition, no longer distinctive of one trader’s goods.
Section 47 gives that principle a specific mechanism, and section 52(c) leaves the general ground available in any event. Genericism is therefore one of the few attacks that never becomes time-barred.
How to keep a mark from going generic
- Always pair the mark with the generic name. The brand identifies the source; a separate ordinary word identifies the product. Never let the mark be the only available word for the thing.
- Use it as an adjective, not a noun or a verb, in your own materials, and never in the plural.
- Mark it as a trade mark in advertising and on packaging — but accurately: under section 103 it is an offence to represent that an unregistered mark is registered, or that a registration covers goods it does not cover.
- Correct generic use by others — trade publications, catalogues, suppliers, and above all competitors. Trigger (a) turns on use by persons carrying on a trade in the article, so a documented history of writing to correct such use is directly relevant evidence.
- Control your licensees. Their use is use connected with the proprietor and so is excluded from trigger (a) — but sloppy licensee usage still feeds public genericism and undermines distinctiveness generally. Impose usage standards in the licence and register the licensee as a registered user.
- If the product was patented, supply a generic name from the outset. Trigger (b) is only engaged where the mark is the only practicable name. Give the market an alternative before the patent ends.
- Keep the evidence of distinctiveness current — sales, advertising, trade recognition — because sections 51 and 52 both ask whether the mark is distinctive now.
The related ways a mark is lost
- Section 14 — removal for three years of continuous non-use, or registration without a good faith intention to use.
- Section 13 — rectification of an entry wrongly made or wrongly remaining, and cancellation or variation for breach of a condition or limitation.
- Section 61(2) — removal for failure to renew, with restoration available for 12 months under section 62.
- Section 35(2) — a registration on an intention to assign to a corporation ceases to have effect if the corporation is not registered as proprietor in time.
Of these, genericism is the only one caused by the mark being too successful — and the only one that can be prevented purely by how the mark is written and policed.
Sources
- Trade Marks Act (Chapter 385) — ss 13, 14, 23, 35, 47, 51, 52, 61, 62, 64, 103
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.