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Loss of distinctiveness – the Singapore experience with generic marks

While trademark owners may beam as their trademarks grow in fame, bursting into widespread popularity, the danger is that someday all value might be lost. Such naivety on the part of mark owners can be detrimental, as once a trademark starts to form part of a common vocabulary, then they become generic and open to public domain. The mark then loses all value and become available for use by anyone.

This distress should be unnecessary, as a trademark owner should not have to risk invalidation of their mark in exchange for product popularity. In fact as long as the mark is used in a continuous and proper fashion, oppositions and invalidation can be avoided, and the mark can continue to remain the exclusive property of its owner. Yet, when trademark owners do not practice proper advertising and labeling, it is only a matter of time before consumers start using the mark as the “name” of the product or service. Consequently, the trademark is stripped of its distinctiveness, giving rise to its own “genericide”, a term that effectively illustrates the process where the trademark owner unknowingly participates in the demise of the distinctiveness of the trademark.

In this context, the old adage that prevention is better than cure has never been more apt. The trademark owner should extend the display of the trademark symbol be it TM or ® to all mediums that carry the brand or the corporate logo. The mark may be prominently displayed on packaging, labels, websites, advertisements, press releases, trade shows, business documents and the like. A multinational company like Google Inc for instance has a long-standing trademark registration for “Google”. Thus, “Google” is generically used in their newsletter signature, with the words “have fun and keep googling.” Interestingly one might have noticed Google Inc has stopped this practice since 2006; instead it has undertaken painstaking attempts to prevent third parties making generic use of “Google”. In writing letters to media companies, Google Inc has thus managed to highlight the importance of “making the distinction between using the word Google to describe using Google to search the internet, and using the word google to describe the act of searching the internet.”

The Singapore experience

Trademark history is filled with distinctive marks such as aspirin, cellophane, margarine, videotape, escalator, and linoleum that have become generic over time, showing that fanciful marks remain vulnerable to genericide. This is evidenced by the recent cautionary warning issued by the Intellectual Property Office of Singapore where the Registrar held that prudence has to be exercised when choosing a trademark. In Kopitiam Investment Pte Ltd v RHotels (Pte) Ltd [2008] SGIPOS 8 , a claim arose over the fanciful word “KOPITIAM” as used on services relating to the provision of food and drinks.

A portmanteau word such as “KOPITIAM” is usually coined by “the telescoping of two dictionary (and generally descriptive) words”. Although a Malay and Hokkien word, the word “Kopitiam” fuses two known words from two language groups. “Kopitiam” is derived from the union of the Malay word “kopi” which means “coffee” and “tiam” which means “shop” in the Hokkien dialect. In the same breath, one would remember older cases of portmanteau words such as “Frumato” (Fruit and Tomato) and “Vaporub” (Vapour + Rub). Despite “KOPITIAM” not being an English word, they remain well-known words in Singapore’s multi-racial and multi-lingual society. The word “kopitiam” has long been accepted to mean a traditional coffee shop and the term is commonly used not only in Singapore but also in Malaysian borders, which has a similar multi-racial and multi lingual society. In fact, judicial notice was taken that the term “kopitiam” was liberally used to in the media, like local press reports to describe a traditional coffee shops.

Finally IPOS determined that because “kopitiam” is so commonly and generically used in the local parlance to mean an eating place or coffee shop which sells a variety of cooked food and beverages that it should not be monopolized by any single trader who provides food and drink. For this reason, the mark cannot be registered as a trade mark. As “Kopitiam” still possessed a strong primary meaning which will be difficult to displace. Since it translates to mean “coffee shop”, it remains that it is a mark that consists exclusively of signs or indications which may serve in trade to designate the kind, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.

A multi-racial, multi-lingual society like Singapore, with four official languages and close to 20 other living languages including various Chinese dialects such as Hokkien, Cantonese and Hakka, it has to be recognized that Singaporeans understand many different languages and frequently use them interchangagebly. It follows that despite coining a fanciful portmanteau word like “Kopitiam”, it is still unacceptable for any trader to monopolize commonly and frequently used descriptive words in the different official or living languages.

Opposition matter of Sunonwealth Electric Machine Industry Co. Ltd brought by Siemens Aktiengesellschaft

Such cases where attempts are made to invalidate or revoke generic marks have become increasingly common in Singapore. In another recent matter of Sunonwealth Electric Machine Industry Co. Ltd brought by Siemens Aktiengesellschaft, Siemens AG sought to oppose and invalidate the mark “Maglev” owned by the company Sunonwealth Electric Machine Industry Ltd. Among other allegations, Siemens submitted the mark had become generic in the trade, alleging that it stood for “magnetic levitation technology, widely used in connection with railway projects in Germany and China for high-speed trains which float off tracks so they can reach speeds of up to 500km/h.

Further, it was held that magazine articles, online newspapers and research papers had written about the use of magnetic levitation technology, referring to this technology as “maglev”. As maglev is the same technology that was incorporated for use in other countries in the early 1975, the Registrar directed that the word “maglev” which is now described in the 1988 New Oxford Dictionary as a noun which means “a transport system in which trains glide above a track, supported by magnetic repulsion and propelled by a linear motion”, originating from the late 20th century from the words “magnetic levitation”.

This was sufficient for the Registrar to make the finding that the word “maglev” had become customary in the language, and in the established practices of the trade as designating the type of products which employ that technology. Similar to the ruling in “Kopitiam” mark, “Maglev” was by the same token found to be generic, and thus invalidated.

These two cases are only a few of the many trademarks that have been refused registrations in the Singapore Trademark Registry in the recent years. Moreover, it is submitted that the outcome of such rulings will only become more common if marks continue to be used incorrectly.

What trademark owners should be compelled to do, is to realize the importance of proper use of their brand name as a trademark, for failure to do so will compromise their trademark protection even incurring the risk of rejection by the Trademark Office or challenges by third parties. For a multiracial country like Singapore with a rich potpourri of different languages and cultures, where language is living and constantly evolving, it is even more imperative for trademark owners to be prudent when it comes to protection of their marks.