There are several ways to do this disappear a mark against the will of its owner. In addition to thenullity suitthere is theforfeiture actionwhich can be requested for two reasons: the degeneration (subject of this sheet) and l’non-use.
What is degeneration?
The brand is degenerated when it becomes a victim of its success, i.e. it becomes a household word to designate the goods or services it was originally intended to cover:
The best known examples are the brands fridge and piña colada which have become common names for refrigerator and cocktail respectively.
From a legal point of view, the worst thing that can happen to a trademark is to end up in the dictionary of common names, because that means that you officially associate that trademark with a definition.
Example of the Larousse for the definition of the term shopping trolley, although there is a "registered trademark" mention at the beginning of the definition in order to avoid degeneration: "small metal trolley used by customers in self-service shops or travellers in railway stations and airports".
What are the consequences of degeneration?
Although every trademark owner wants to achieve such a reputation one day, it is absolutely necessary to prevent the trademark from degenerating. Why should this be avoided?
because if an interested person acts out for degeneration,the right to the trademark will be lost ;
accordingly, all the value attached to the brand as an intangible asset will be lost. A very well-known brand is very expensive, but a brand that is too well known and becomes degenerate is no longer worth anything;
In addition, others can use your trademark without fear of infringement action from you: you won't be able to defend that name ;
the public will no longer associate this brand with your company's products or services, and your communication actions will therefore be likely to benefit all stakeholders of your deal.
How to avoid degeneration of your brand?
Simple prevention solutions:
if you sell products, specify on the packaging that the trade mark is registered, mentioning the full name of the proprietor ;
indicate on your websiteYou can indicate in the footer or on your legal notice that the trademark is registered, for example, by mentioning the full name of the owner;
when you refer to your brand in your communication, remember to put an uppercase to mark its importance;
you can even add a ™ or a Ⓡ just after your brand: even if these symbols have no legal value in France (they are Anglo-Saxon signs), they are known to the general public and allow you to highlight your brand as a right specific to your company;
you absolutely must avoid to commit acts that go in the direction of degeneration, using your brand as a common name yourself. For example, if you register the BABLO trademark for coloured pencils, avoid talking about it by saying "with a bablo, your drawings will be easier". Always say "with a Bablo pencil, your drawings will be easier". The generic term is pencil, and the protected trademark is Bablo ;
overall, avoid using a article like "the" or "one" in front of your mark.
The solutions to combat a risk of degeneration:
in a general way, do not pass on any third party use tending to the degeneration of your brand;
keep an eye on use of your trademark on the Internet and in the media: systematically ask for a modification or an erratum if you notice that your trademark is used as a common name designating a product or service. Above all, keep copies of your letters and formal notices in order to prove your interventions;
if your trademark is used as a common name by a competitor,ask him to stop this use and in case of refusal attack it for infringement and/or unfair competition It is your inaction that will be sanctioned by degeneration if you do not try to prevent third parties from using your trademark as a common name;
if your brand is in the dictionary, do like the Caddie company andmake it clear that it is a registered trademark...it will limit the impact of this unfortunate event.
Is the lapse automatic?
No, and fortunately! The forfeiture must be court-ordered by an interested third party, i.e. who has a good reason to do so. It is pronounced by the judge if the degeneration is proven, and if the defendant cannot show that he has fought it with all the necessary means. This is why it is imperative to build up a solid case including all copies of letters, complaints, demands and possible subpoenasYou may even have favorable court decisions to prove that you are fighting against the degeneration of your brand.
If you have never tried to prevent a significant use of your trademark as a common name, the lapse for degeneration is likely to be pronounced.