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Paul Harris, an Intellectual Property Litigation Partner at Pillsbury Winthrop Shaw Pittman LLP's London office with over 25 years of experience in intellectual property cases, gives his thoughts on a topic that is a well-known frustration to brand owners–the use of trade marks in dictionaries, reinforcing the impression that the mark is generic.
Over to you Paul...
I have decided to look at the use of trade marks in dictionaries in part because my good friend, Anna-Lena Wolfe, Head of Trade Marks at AB Tetra Pak, asked me recently about the issue, but also because I’m conscious of the shifting burden being placed on brand owners by the courts in Europe to establish that a mark has not become generic.
Of course, not every brand owner is concerned about their mark becoming generic. Take Dyson for example. In his autobiography, Sir James Dyson paints a scenario in the future of a little boy not being allowed by his mother to go out and play with his friends until he’d finished ‘dysoning’ his room. It’s certainly one way of continuing to be remembered after death, and Sir James is a very capable marketing man (although his desire for immortality is probably going a bit too far for most people). As yet, ‘dyson’ hasn’t made it into the online version of the Oxford English Dictionary, either as a noun or a verb, so I guess he’ll just have to try harder.
It may be tempting to think that this is a problem that really only affects older marks, like Hoover, which in the UK is used as the alternative verb to ‘vacuuming’, or in the U.S., ‘Kleenex’ being the noun for tissues. Not so. Both the marks GOOGLE and BOTOX are suffering a similar fate, although Google Inc. has been fighting back by sending out cease-and-desist letters. (In Sweden, the company has prevented the Swedish Language Council from adding a new word meaning ‘unGoogleable’.) But in the
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