‘Google it’ - generic term?
Google is the number one search engine in the world right now. The term ‘google it’ is a daily essential to most peoples vocabulary, but has this gone too far?
In the United Kingdom, a trade mark acts as the competitive badge to protect companies from unfair competition, and consumers from confusion. Google, definitely falls into this category. But what happens when a trade mark is used so much, that people being to associate the given mark with the activity?
When was the last time someone said they would vacuum clean their house? Good question, nobody uses that term (or at least very small amounts of people use that term). The generic term for the activity is ‘hoovering’ the house, and that’s the interesting part. Hoover was once a registered trade mark for a design of the vacuum cleaner, but due to the “Hoover’ becoming a generic term for the activity of vacuum cleaning, the mark was revoked.
So any trade mark is in serious danger of revocation if their mark becomes a generic term (section 46 Trade Mark Act), but how far does the scope go?
There has been a lot of controversy with Google on this point. The term ‘google it’ is used every day by thousands of people who are not necessarily referring to Google, but are simply referring to an internet search regardless of the search engine used. So does this fall within the scope of a generic term? The recent decision in the American case David Elliott Chris Gillespie v. Google INC, says apparently not. The claimants argued that the population use Google as a verb to describe the activity of an internet search. Although the court could recognise this, it was pointed out that a trade mark being used a verb will not be enough alone to revoke the mark for genericism, but in fact may promote the fame of the mark.
On the face of this case, it may seem strange to conclude that the mark being used a verb alone will not conclude to a generic term, when we think of the scenario with Hoover. However, the scales of ‘fairness’ if you will seem to balance here. The floodgates would open for hundreds of large companies with large trade marks for revocation for genericism.
Picture someone who had lost their Apple iPhone, would they say they had lost their phone? Or lost their iPhone? This seems like a silly point to make until you think what if it wasn't an iPhone. Change the branding from Apple to Samsung. Would this person say I have lost my Samsung phone? Some people might, but it doesn't quite sound right. Now, what if we say this is a verb used to describe the use of a 1 Thursday, 16 November 2017 mobile phone? Not strictly false. If Google had lost their trade mark due to these reasons, what would happen to Apple?
It seems as though the scales remain equally balanced. Although the purpose of the revocation for genericism is for the avoidance of monopolisation, a situation like this may have tilted too far.
By George Bower, Undergraduate LLB Law student at Southampton Solent University