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Should we just google it?

In days gone by, when people sought answers to life's questions, they may have asked their elders, referred to a text book or encyclopaedia or even attempted problem solving through trial and error. Now, the vast majority of people when faced with any type of problem will "just google it".

Most would assume that is a good thing for Google, but it does present some issues for the global search giant.

Despite its overwhelming popularity, Google has for some time been concerned about its ability to maintain its trade marks. More than a decade ago, the company warned investors that there was "a risk that the word 'Google' could become so commonly used that it becomes synonymous with the word 'search'." It said that "If this happens, we could lose protection for this trade mark, which could result in other people using the word 'Google' to refer to their own products, thus diminishing our brand."

Of course, Google is acutely aware of the value of its brand, with 283 trade marks currently registered in favour of Google Inc. in Australia alone.

US Court action

That exact issue was recently the subject of Court action in the US (Elliott v. Google Inc.), which sought to remove some of Google's trade marks from the US trade mark register. Google was able to stave off (for now) the application which was made on the basis that because the term ‘Google' has become so popular and is commonly used as a verb that it should lose its status as a trade mark.

The issue was brought to a head after David Elliott and Chris Gillespie acquired hundreds of domain names incorporating the word Google. Google objected, asserting that registering the domains was "cybersquatting" and an infringement of Google's trade mark (as the domains contained the trade mark 'Google').

In response, Elliott and Gillespie sought the cancellation of the Google trade mark on the basis that Google had become generic. They cited public surveys, produced expert linguists and submitted a list of dozens of movies and television series - such as NBC's The Office - which showed that the word had been used as a verb or with generic reference. They also pointed to dictionaries which defined ‘Google' as to search for something online.

The key issue in the case was whether the trade mark ‘Google' had become the generic name for the goods or services for which it is registered. That is, if ‘Google' becomes the word for searching the internet or search engines generally, then it will be generic. However, the fact that consumers might use the word ‘google' as a verb to mean "to search the Internet," does not automatically mean that the term has become generic. The trade mark ‘Google' will remain significant whilst consumers continue to identify the search engine through the use of its mark.

The case has run over a number of years and the recent decision was handed down by the US Federal Appeals Court for the Ninth Circuit, California. The Court considered that Google is still widely identified as a brand name and therefore worthy of protection. People still understand the word as identifying not just any search engine, but Google's search engine in particular. In that way, the mark has not (yet) become a generic description for the product or service.

What happens when marks become generic?

Genericide is the difficulty faced by companies whose brands gain such strong currency in the marketplace that they become known, not as brands but as product categories. Consumers are familiar with famous brand names being morphed into shorthand substitutes for branded products or services. Examples are marks like Bandaid and Tupperware which have become widely used as generic terms for their product names and are generally used to describe that class of product, rather than the descriptive terms "adhesive bandage" or "food storage container". Typically, this only occurs with the most well-known of products such as aspirin, escalator, yo-yo or zipper. As occurred with each of the above examples. If a brand's popularity continues to rise, its trade mark significance can be undermined where it becomes known as the name of the product or service. In such cases, the generic mark can be cancelled and the owner's exclusive right to use or control that mark revoked.

The US test for genericide is consumer focussed. It is concerned with the primary significance of the mark to the public. In comparison, the Australian test is industry-focussed. Section 87 of the Trade Marks Act provides that a person no longer has the exclusive right to use a trade mark if it "becomes generally accepted within the relevant trade as a sign describing or denoting the name of the good or service." As members of a particular trade are presumed to have a better understanding of the market in which they operate, the Australian test is thought to apply a higher benchmark than its US counterpart. The result is that it is more difficult to have a mark removed from the register in Australia on the basis that it has become generic of the relevant goods or services. However, as well-known products generally have global reach, it is important to understand the difference.

Lessons

To ward off attacks of this nature, Google has previously adopted Rules for the Proper Usage of its trade marks, which it publishes. Those include, among many others, the following requirements:

  • Use the trade mark only as an adjective, never as a noun or verb, and never in the plural or possessive form.
  • Use a generic term following the trade mark, for example: GOOGLE search engine, Google search, GOOGLE web search. Don't use Google trade marks in a way that suggests a common, descriptive, or generic meaning.

Other tips might include:

  • Always use the ™ symbol or ® symbol with your trade mark to ensure that it is seen as a trade mark rather than a generic term.
  • Avoid using variations of a trade mark as this can signal to consumers that improper use is tolerated. For example, do not allow abbreviations or combine it with other words or marks.

Those rules are just as relevant and can be applied equally to most other businesses, including those which are famous or have a dominant position within their own specific or niche markets.

Don't fracture your brand

In relation to the last point, Google provides a further interesting study. Generally, the strongest marks are those which are used consistently and become best recognised by consumers.

Perhaps due to its size, Google can get away with breaking that rule. As we know, Google makes regular changes to its core marks by regularly changing the appearance of its search page. Even subtle changes are often adopted.

However, the changes can also be more stark, such as this example used in recognition of Wimbledon's 140th anniversary in 2017.

Of course the intent is to develop engagement with the relevant customer base or audience, which is a great motivator for most brands. However, Google is no doubt well aware that there is a fine line between creativity/ engagement and the risk that it may be seen to have fractured or moved away from its own marks (perhaps into the more generic) by inconsistency of use.

It will be interesting to see how Google continues to manage its risk over the coming years.

"The content of this publication is for reference purposes only. It is current at the date of publication. This content does not constitute legal advice and should not be relied upon as such. Legal advice about your specific circumstances should always be obtained before taking any action based on this publication."