When a word is described as a ‘generic’ term, it can no longer be registered or enforced as a trademark. It happens as brands or slogans become common place, and don’t differentiate any longer. The famous ugg boots case is a prime example – ‘ugg boots’ can no longer be ‘owned’ by anyone – it is a generic descriptive term for woollen boots. Another recent and interesting example is Apple, and the loss of the right to the iconic ‘i’ prefix.
I first pondered about this issue when Vegemite used the prefix in the name of its cheese-injected cousin – ‘isnack2.0’. I wondered – can Apple do anything about the use of the ‘i’, when it has been so iconic of their products for many years? Thankfully, the name only lasted a few weeks and the issue did not ever come to light. However, a small Sydney based company has brought the issue back on the IP agenda.
A small company called Wholesale Central (based in Sydney) has overcome a challenge by Apple to trademark the word DOPi (Ipod spelt backwards) for its range of laptop bags and cases for Apple products. The argument was that consumers would be confused in thinking they were purchasing an Apple product. However, the tribunal rejected Apple’s claim, saying that no such confusion would occur.
The ‘i’ prefix is much more common place that one would think – iSkin and iSoft are two other products using it, and I’m sure there would be many more. The word is, that thanks to this case, companies wishing to use the prefix are much more likely to get away with it.
I wonder whether Apple should be pleased with this development – that something they have created has become ‘generic’ – or whether they should be furious?
An issue which raised discussion in our boardroom recently is Google and how long it will take for the word to become ‘generic’ – meaning simply to search for or find out more information about something. The expression ‘google it’ has become so common place, that in July 2006, it was officially added to both the Merriam Webster Collegiate Dictionary as well as the Oxford English Dictionary, meaning, “to use the Google search engine to obtain information on the Internet.” But, I know for a fact that many people use the expression when Google is not their prime search engine. As I mention above, if the word no longer differentiates between one brand or supplier to another, then has it reached the ‘generic’ level?