What Happens When a Famous Trademark Becomes Generic?

While the Indian Trade Marks Act, 1999 does not explicitly use the term “genericide,” its statutory architecture, particularly Sections 9(1)(c) and 57, establishes a robust doctrinal framework for identifying, preventing, and remedying the loss of distinctiveness. Interpreted alongside evolving judicial precedent and informed by global experience, this framework reveals a dynamic tension between private proprietary rights and the public’s interest in linguistic freedom. The following analysis examines this interplay, drawing on landmark international cases not as isolated curiosities, but as instructive mirrors reflecting vulnerabilities inherent in even the strongest trademarks—vulnerabilities acutely relevant to India’s rapidly scaling innovation economy.

I. Statutory Safeguards Against Genericness: Preventive and Reactive Measures

The Indian regime adopts a two-pronged approach to genericness: ex ante exclusion at the registration stage and ex post rectification upon demonstrable loss of distinctiveness.

Section 9(1)(c) operates as the first line of defense, prohibiting registration of marks consisting “exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.”

Here’s the key: it doesn’t need everyone to use the term generically, just enough people in the trade or market that it no longer points back to one brand. In “Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd.” (2018), the Supreme Court affirmed that descriptive terms, even if not yet fully generic, may be denied registration if they lack inherent or acquired distinctiveness, a principle reinforcing the public policy rationale: essential commercial vocabulary must remain freely available.

More consequential, however, is Section 57, which empowers the Registrar or any aggrieved party to apply for rectification of the register where, inter alia, “the trademark has become the common name in the trade for the goods or services for which it is registered as a result of the acts or inactivity of the proprietor.” This clause is pivotal. It shifts the burden onto the rights holder: protection is not perpetual but conditional upon vigilant stewardship. Judicial interpretation has clarified that “inactivity” includes failure to oppose widespread generic use by third parties, inconsistent branding, or, critically, the proprietor’s own descriptive deployment of the mark in advertising, packaging, or technical literature.

II. The Centrality of Consumer Perception: Beyond Dictionary Definitions

In India, like most places, one thing matters most: “what real people think” when they hear the name. As held in Yahoo! Inc. v. Akash Arora (1999), the test is not what the trademark owner intends, but how the mark is understood by the average consumer in the relevant market. This necessitates a holistic evidentiary assessment:

1. Lexicographic evidence: So how do courts figure this out? Inclusion in dictionaries as a common noun (e.g., “aspirin”) is probative, though not conclusive, particularly where editorial policies lag behind actual usage.

2. Media and trade publications: Frequent uncapitalized, generic use in mainstream press or industry journals strongly indicates linguistic absorption.

3. Competitor behavior: Widespread adoption of the term by rivals especially where unchallenged signals diminished source-identifying power.

4. Proprietor’s own conduct: Perhaps most damning is internal misuse. When a company refers to its product as “an escalator” (rather than “an Otis Escalator”) in manuals or ads, it implicitly concedes generic status, a point underscored in the U.S. Haughton Elevator Co. v. Seeberger (1950) ruling, which directly informed subsequent Indian reasoning in rectification proceedings.

Notably, the Delhi High Court in Pepsico India Holdings Pvt. Ltd. v. Hindustan Coca-Cola Beverages Pvt. Ltd. (2022), while addressing descriptive marks in the FMCG sector, emphasized that even high brand recognition does not immunize a mark from genericide if survey evidence demonstrates that consumers primarily associate the term with product type rather than origin.

III. Global Precedents: Lessons in Erosion and Resilience

A. Marks Lost to Genericide

• Aspirin (Bayer AG): “Aspirin” started as Bayer’s exclusive name for acetylsalicylic acid, but after WWI, Allied governments and factories used it freely. Within years, it wasn’t Bayer’s drug anymore; it was just aspirin. The U.S. courts concluded the term had become “the name of the product, not the producer.” Under Indian law, this aligns precisely with Section 9(1)(c): once customary in medical and lay parlance, exclusivity becomes anti-competitive.

• Escalator (Otis Elevator Co.): The proprietor’s own technical documentation consistently referred to “escalators” as a product category, not a brand. This self-inflicted wound proved fatal. The Indian position as reinforced in M/S J.N. Bagga & Co. v. M/S Bata India Ltd. treats such conduct as constructive abandonment, satisfying the “acts of the proprietor” limb under Section 57.

• Thermos (King-Seeley Thermos Co.) : Though the U.S. court permitted limited continued use with disclaimers, the mark’s generic status for vacuum flasks was affirmed. The nuanced outcome illustrates an important principle: genericide need not be total. Partial genericness, where a term is generic for some goods but retains distinctiveness for others, is legally cognizable, demanding granular analysis rather than binary classification.

B. Marks Preserved Through Vigilance

• Xerox Corp.: Facing pervasive verbification (“to xerox”), the company launched sustained educational campaigns, issued style guides to media outlets, and consistently used “Xerox” as an adjective (“Xerox copies”). Smartly, Xerox didn’t just sue it educated : sending style guides to journalists, running ads reminding people “‘Xerox’ is a brand, not a verb.” This model of proactive descriptiveness management offers a replicable framework for Indian proprietors, especially in sectors like ed-tech or fintech, where brand names rapidly acquire verb status.

• Google LLC: The Ninth Circuit’s decision in Elliott v. Google (2017) drew a vital distinction: verb use does not automatically equate to genericness if the primary significance remains source-identifying. Evidence showed consumers still understood “Google” as a specific search engine, not search engines in toto. This reasoning resonates with the Indian test of primary significance, affirming that linguistic evolution does not ipso facto extinguish rights provided the core function endures.

IV. Contemporary Challenges in the Indian Context

Three emerging dynamics heighten genericide risks in India:

1. Digital Acceleration: Social media virality can propel a brand name into generic usage within weeks. A startup’s app name may trend as a verb (#SwiggyIt, #OlaRide) before legal teams can respond. The speed of linguistic diffusion now outpaces traditional monitoring mechanisms.

2. Vernacular Integration: When English trademarks are absorbed into Hindi, Marathi, or Tamil vernaculars, e.g., “Zoom kar lo” or “Zomato order karo,” they often shed capitalization and grammatical precision, accelerating generic drift. Indian courts have yet to develop specific guidance on assessing multilingual genericness, though Section 57’s “common name in the trade” standard is inherently language-agnostic.

3. AI and Auto-Correct: Even your phone works against you: Auto-correct often lowercases brand names (“google,” not “Google”). It’s unintentional, but if you ignore it? Courts may see that as your inaction.

V. Strategic Imperatives for Trademark Proprietors

To mitigate genericide risk, proprietors must adopt a multi-layered strategy grounded in statutory obligations:

1. Consistent Grammatical Usage: Always use the mark as an adjective, paired with a generic term (e.g., “Kleenex® brand tissues,” “Photoshop® software”). Avoid noun or verb constructions in all public-facing materials.

2. Systematic Monitoring and Enforcement: Deploy watch services for media, domain registrations, and app stores. Issue polite but firm cease-and-desist letters or coexistence agreements upon detecting misuse, documenting all efforts to demonstrate diligence under Section 57.

3. Public Education Initiatives: Partner with industry associations, journalism schools, and content platforms to promote trademark literacy. Xerox’s decades-long campaign remains the gold standard; in India, CII or FICCI could facilitate sector-wide best-practice guidelines.

4. Internal Governance: Mandate trademark usage training for marketing, PR, and technical teams. Embed legal review in product documentation workflows to prevent inadvertent generic references.

VI. Policy Reflection: The Public Domain as a Necessary Counterweight

Genericide is not a flaw in the system; it is a feature. Trademark law, at its core, serves consumer welfare and fair competition. Granting perpetual monopolies over functional or descriptive terms would stifle innovation and distort markets. The Act’s provisions reflect a deliberate equilibrium: incentivize branding and quality, but ensure that language, the bedrock of commerce, remains a shared resource.

In India’s context with its dense, multilingual markets and explosive digital adoption, this balance is more delicate than ever. The judiciary, as seen in M/S. Amul Dairy v. M/s. Amulya Dairy (where “Amul” was upheld due to overwhelming secondary meaning), has shown willingness to protect strong marks. Yet it remains vigilant against overreach, recognizing that today’s brand name may be tomorrow’s dictionary entry.

Conclusion

A trademark’s fate isn’t sealed in law books; it’s written daily in how people talk. And under India’s 1999 Act, one rule stands: distinctiveness isn’t granted; it’s earned, again and again. Global jurisprudence offers not a catalogue of failures, but a repository of strategic insights. The loss of “Aspirin” or “Escalator” was not inevitable; it was the consequence of inattention. Conversely, the survival of “Xerox” or “Google” testifies to the efficacy of disciplined, forward-looking brand stewardship. For practitioners and proprietors alike, the lesson is unequivocal: trademark rights do not reside in certificates or registries. They reside in the minds of consumers. And minds, like language, are always in motion.