The importance of defending your trade mark
A trade mark can represent a significant earning tool, as the legal owner has the exclusive right to use, sell or license the mark. However, the importance of defending your trade mark can be more than just economical, the owner needs to make sure the trade mark does not turn into a ‘generic term’.
It is important as a trade mark owner to prevent others from using the trade mark as this might lead to trade mark dilution, meaning that the trade mark has become customary and lost its distinctiveness. The risk of dilution arises when people are allowed to use a trade mark for goods not originating from the trade mark owner as the trade mark can become known as a ‘generic term’ and it can be struck off from the trade mark register.
The dilution process can be described as the ‘whittling away’ of the trade mark’s selling power. Trade mark dilution law seeks to protect the mark’s marketing value by assuming that the key to the marketing value of a trade mark involves granting domination over the use of the trade mark to its owner. This exclusivity enables the owner to create a brand identity making the mark synonymous with this one source.
Someone who is fighting hard to protect their trade mark is DC Comics Inc. and Marvel Characters Inc. Recently the British writer Graham Jules got a notice after he attempted to register a trademark for his book ‘Business Zero to Superhero’. DC and Marvel got together 1979 and registered the trade mark ‘superhero’ for a range of classes (with renewal 2006). They have also recently filed an opposition to diet-supplement company Bio-Synergy, who were seeking to renew their trademark for the slogan ‘Fuel the super-hero inside’. The UK Intellectual Property Office (IPO) revoked Bio-Synergy’s registration and ordered the company to pay part of DC’s and Marvel’s costs of opposing the application.
As other trade mark owners, DC and Marvel have to work for their trade mark not to become a generic term describing characters with extraordinary powers in general. This would mean that the term ‘superhero’ would no longer be associated with DC and Marvel, but with this kind of character in general. If that happens, the trade mark risks becoming unprotectable and being struck from the register, meaning that DC and Marvel would no longer would have a property right in the mark. Other trade marks on borderline of becoming generic terms are for example ‘Hoover’, ‘Blue Tack’ and ‘Sellotape’.