Trademarks: a brief comment on the loss of distinctiveness

Written by Tainara Barbosa

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A trademark is defined by Article 122 of Law 9,279/14 as visually perceptible distinctive signs.

Art. 123 defines service or product trademarks, certification trademarks and collective trademarks. Product or service trademarks, in particular, are those used to distinguish a product or service from another identical, similar or related product or service of different origin.

The criteria assessed for granting trademark registration are:

– It must be a visually perceptible sign

– It must be distinctive

– It cannot be subject to any legal prohibitions, which are listed on the Art. 124 of the IPL.

What happens when a trademark loses its distinctiveness?

We have some examples in our daily lives of trademarks that became nouns that identify objects, as if they were synonyms of the same. For example, GILLETTE, XEROX, COTTON SWAB, CHICLETS, nylon, Pyrex, among many other examples that we see in our daily lives.

Despite the popularization of the distinctive name by consumers, in some cases the holders of trademark registrations continue to have the right to its exclusive use. This process of vulgarization that a distinctive sign goes through, but the trademark registration is still in force, is called Genericism.

When the trademark registration also no longer exists, the (no longer) distinctive sign has undergone a process of Genericide.

This is a process that is detrimental to a brand, causing it to lose relevance in the market. Article 130 of the IPL establishes in its item III that the owner is guaranteed the right to “protect its material integrity or reputation.” This right ends up being an obligation, since the owner’s omission upon the market leaves the way open for the Genericide of its trademark.

A current case

Recently, the company Tupperware declared bankruptcy. And an article published by the BBC brought in its text “The 78-year-old firm has become so synonymous with food storage that many people use its name when referring to any plastic container”. When we look at our daily lives, we can see that Tupperware has indeed become a synonym for plastic containers used to store food, mainly.

It is important to think about how much the trademark genericism has harmed it, keeping in mind, of course, the other market variables.

The Velcro Case

Velcro is the trademark of a hook-and-loop fastening mechanism. The brand is fighting intense battles against the genericism of the brand, always drawing attention to the fact that Velcro refers to the trademark, and not a noun. The hook-and-loop fastening system is the correct technical term to be used widely. For example, through the “Don’t say Velcro” campaign.

The website of the campaign carried out by the company can be accessed at: https://www.velcro.com/original-thinking/the-velcro-brand-trademark-guidelines/dont-say-velcro/

The Velcro case is an example of how a company handed its right, and obligation, to protect its Trademark.

Bibliographic References:

BRAZIL. Law No. 9279 of May 14, 1996. Regulates rights and obligations related to industrial property.

PORTILHO, Deborah. Generification or Degeneration of the Brand? UPpharma Magazine No. 124, year 33, March/April 2011. Available at: https://www.dportilho.com.br/generificacao-ou-degenerescencia-da-marca/

SCHMIDT, Lélio Denicoli. Degeneration of a brand. PUCSP Legal Encyclopedia. Available at: https://enciclopediajuridica.pucsp.br/verbete/246/edicao-1/degeneracao-de-marca

HOSKINS, Peter. Party over for Tupperware as it files for bankruptcy. BBC. Available at: https://www.bbc.com/news/articles/c4gdprv2ddxo

VELCRO. Don’t say Velcro. Available at: https://www.velcro.com/original-thinking/the-velcro-brand-trademark-guidelines/dont-say-velcro/