It can happen that a brand, initially registered and protected as a distinctive sign, ends up becoming the generic term used to indicate a specific type of product.
This phenomenon, known as “vulgarization of a trademark” or “trademark genericide”, occurs when the trademark loses its distinctive capacity and effectively becomes the common name of a product, rather than a distinctive sign linked to a specific company.
A well-known example of vulgarization of trademark is that of the “Cellophane” brand, which initially represented a specific product but which, over time, has become a generic term to indicate that type of material.
The case
A recent case that has attracted attention concerns the trademark “Shavette”, registered in Europe for razors, which was challenged before the EUIPO (European Union Intellectual Property Office) pursuant to Article 58(1)(b) of Regulation (EU) 2017/1001 on the European Union trademark.
The article in question establishes that a trademark can be revoked if the use of the same has become so widespread as to become a generic term that designates the category or nature of the goods or services covered by the registration, rather than indicating the specific commercial origin of a company.
In other words, the trademark loses its ability to distinguish the products of a company, becoming the common name of the product itself.
In the case of the “Shavette” trademark, the applicant company, after having received a refusal in the first instance by the EUIPO, filed an appeal before the Board of Appeal arguing that the term “Shavette” had become a common term to identify a type of razor in the Benelux countries, France, Germany, Italy, Spain, Sweden and the United Kingdom.
The applicant argued that, taking into account the relevant public, which includes barbers, hairdressers and private consumers, the term “shavette” had become suggestive to identify razors. In particular, the term is composed of the English word “shave” and the suffix “-ette” which indicates a diminutive.
Furthermore, the applicant pointed out that the term “shavette” was used by journalists, bloggers, writers, retailers and, more generally, by consumers and barbers as a generic term. There are also numerous online stores that use the term “shavette” to indicate a type of razor and this term also appears on Wikipedia.
The applicant then pointed out that the owner had not taken adequate measures to prevent his trademark from becoming a generic name. On the contrary, he argued that it was the owner himself who had used “shavette” as a generic name in some of his communications, such as Facebook posts and brochures, and that he had tolerated the generic use of the trademark also by his official retailers.
The EUIPO’s Position
The Board of Appeal took into consideration the applicant’s arguments, recalling that when a trademark loses its distinctive character due to acts or inactivity of the owner, becoming a common name, the trademark owner can no longer assert the exclusive rights conferred by the registration.
The office then pointed out that, on a case-by-case basis, it is necessary to determine what measures the trademark owner should have taken to prevent vulgarization.
In the specific case, the Board of Appeal rejected the application for revocation due to vulgarization, considering that the trademark owner had indeed demonstrated that he had made reasonable efforts to protect the “Shavette” trademark as a registered trademark.
The evidence presented by the applicant was considered to be of low probative value. The entries on Wikipedia, in particular, are information that can be easily modified at any time, by anyone, even anonymously, and in many cases are based on uncertain data.
The EUIPO then pointed out that no official dictionary contains the entry relating to the contested trademark, demonstrating that there has not been a sufficiently widespread use to make it a generic name.
The EUIPO also reiterated that the burden of proof imposed on the trademark owner must not be unreasonable. If businesses, especially those with limited resources, were forced to pursue and challenge every single generic use of their trademarks on the Internet, they would be discriminated against. Such a requirement would impose an excessive and unfair burden, creating the risk of abuse by competitors and third parties interested in a registered trademark.
Conclusions
The EUIPO thus confirmed that the trademark “Shavette” has not become a generic term and rejected the request for revocation.
The decision highlights the importance for trademark owners to take appropriate measures to protect their rights. However, it also underlines that the burden required must not be excessive, to ensure a fair balance between the protection of the rights of the owners and the risk of imposing unjustified burdens.
Giulia Mugnaini