Finally, it’s holiday time and I’m in the south of France on the beach! I am sunbathing in my pretty vintage bikini with a pina colada in my hand. I am hungry. I put on my cargo trousers and go buy a piadina at the snack bar right behind. I use the hotspot to send news to my family. Alas, the connection is really slow… Never mind, I will send a texto, as the locals say.

Did you recognize the trademarks that have become generic in the short text above? There are six of them: Vintage, Pina Colada, Cargo, Piadina, Hot Spot and Texto (the French word for an SMS message).

There is also an intruder: bikini! The two-piece swimsuit was created in 1946 by a Frenchman, Louis Réard, who filed a patent to protect it (he was trained as an engineer). He named it bikini in reference to the atoll of the same name in the Marshall Islands, made famous by American nuclear tests. He was really good at marketing and hoped that this new design would have the effect of an ‘anatomical bomb’, as he put it… This swimsuit, which left the navel exposed, caused such a scandal that it was banned for a time on French, Belgian, Italian and Spanish beaches. In the United States, a song was dedicated to it, ‘Itsy Bitsy Teenie Weenie Yellow Polka Dot Bikini’, and a few months later, Dalida’s French version (‘itsi bitsi, petit bikini’) was a tremendous success.

But let’s get back to our legal matters…

A trademark degeneration or genericide, which is it?

When a company registers a trademark, it is mainly to obtain a monopoly on the use of that trademark. There are, of course, conditions for obtaining such exclusivity. The main one is that the trademark must be distinctive for the products and services in question (for example, a furniture manufacturer cannot acquire a monopoly on the word ‘armchair’ by registering the word ‘armchair’ as a trademark). The trademark must be capable of distinguishing a company’s products and services from those of its competitors. From the consumer’s point of view, the trademark provides a guarantee of the origin of the product.

A trademark may be distinctive at the time of registration but lose its distinctiveness later on. In this case, the owner loses the monopoly, and its competitors will be free to use it. This is known as trademark degeneration or genericide. More specifically, here are the text provisions:

• For French trademarks: “The owner of a trademark can see his rights revoked if, in consequence of his own acts, the mark has become: a) the common name in trade for a product or service” (Article L 714-6 of the Intellectual Property Code).
• For European Union trademarks: ” 1. The rights of the owner of a EU trade mark shall be declared to be revoked on application to the Office or by way of a counterclaim in infringement proceedings […] (b) if, as a result of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered ” (Art. 58 of Regulation (EU) 2017/1001 on the European Union trade mark).

So, no holidays for trademark owners at risk of genericide?

Indeed, if the owner has used their trademark as a generic term or has allowed third parties to do so, then the trademark may be revoked.

This is how the French Courts were able to revoke the 6 trademarks mentioned at the beginning of this article.  

For example, the trademark ‘Pina Colada’ was revoked due to its owner’s passivity when facing widespread use of the trademark in recipe books, bar menus and even a piece of music…  (Paris Court of Appeal, 19 October 2001).

The case of ‘Cargo’, used by professionals of the fashion industry as a common name for loose-fitting trousers with large bellows pockets, is also interesting. The judges considered that even though the owner had sent formal notices to one of its competitors, this was not enough because they had not sent anything to the textile professionals who use this word on their websites or in various publications (Paris District Court, 10 July 2009).

Also in the fashion field, the trademark ‘Vintage’ was filed in 1991. The word originally referred to 20-year-old Porto wines and was therefore originally distinctive for clothing. However, in 2005, the Paris Court of Appeal considered that the word had become common in the clothing sector, based on the definition in the fashion dictionary, which associates it with the enthusiasm for old clothing that began in the 1980s, as well as various writings dating from the early 1990s and articles from the 2000s. The Court also noted that the proprietor had brought only one action to protect its trademark in 2002 and did not explain its lack of follow-up to cease and desist letters that it sent to other infringers (Paris Court of Appeal, 20 April 2005).

It can be deducted from these decisions that the owner of a highly successful trademark that is likely to become a generic term has every interest in watching out for, and taking action in writing (while retaining evidence) against, any use of their trademark.