• ALICANTE ABSTRACT

    RESCUING A BRAND from the Jaws of the Generic

    For brand names, success can be a double-edged sword. Brand owners want to foster an immediate link between their marks and the products or services they provide, but in attempting to create that connection it is all too easy to cross the line between use as a brand and use as a descriptor.

    A borderline descriptive mark used in this way may appear to enjoy a high level of recognition—but when probed, it may turn out that consumers perceive the term as the generic name for the goods or services, regardless of the source. The consequence may ultimately be loss of rights.

     

    THE HORNS OF RED BULL’S DILEMMA

    What can happen when brand owners fail to ensure proper use of their marks is apparent from a recent OHIM Cancellation Division decision, Osotspa Co. Ltd. v Red Bull GmbH (Cancellation No. 1020C).

    In that case, Osotspa applied to revoke Red Bull’s CTM no. 835033 for STIMULATION in respect of a range of food and drink, claiming under Article 50 (1) (b) CTMR that, in consequence of the acts or inactivity of Red Bull, STIMULATION had become the common name in the trade for the goods in respect of which it was registered.

    In support, Osotspa filed copies of magazine articles, product reviews, market reports and Internet print-outs showing that the term “stimulation drinks” was in widespread use to denote energy drinks in the United Kingdom.

    Red Bull countered that its product enjoyed immense reputation, and that even if “stimulation drink” had a generic meaning, STIMULATION on its own did not. However, its evidence showed that it had regularly described its product in television spots as “stimulation for body and mind.” Its evidence also showed that it had commonly referred to its products as “stimulation drinks” in advertising. One print ad had claimed, “You don’t drink Red Bull. You use it. Red Bull is THE stimulation drink with a unique combination of ingredients and effect.” 

     

    VICTIM OF ITS OWN SUCCESS

    Red Bull appeared to enjoy a high level of public recognition in STIMULATION in the U.K., with a market survey showing 38% recognition that STIMULATION referred to a specific energy drink. However, given Red Bull’s extremely high market share, OHIM considered this figure to be comparatively low. The survey did not weigh sufficiently strongly against the very compelling evidence that STIMULATION had become the generic term in the trade and amongst the public for a type of energy drink, and that Red Bull had contributed to this process by using the mark descriptively itself.

    The Cancellation Division ordered revocation of the CTM for STIMULATION in respect of non-alcoholic drinks, but allowed it to stand for alcoholic drinks and foods, in respect of which generic use had not been established.

     

    COMMENT

    Red Bull’s tale is a cautionary one.

    Descriptive use of trade marks by brand owners is common, and in the case of suggestive marks, can cause consumers to understand the mark as denoting all goods or services of a particular type, rather than just those of the brand owner. To that end, the Cancellation Division remarked:

    “the degeneration of a trade mark’s distinctive force is something which is always more likely to occur when a mark has some sort of suggestive aptness…for designating not just a particular producer’s product but a particular type of product…the positive connotations of [STIMULATION] are part and parcel of the CTM proprietor’s marketing campaign…against this background, it is unsurprising that usage of the term ‘stimulation drink’ has gradually gained ground in the drinks industry, with its meaning eventually feeding through to end consumers.”

    Like charity, stopping the slow slide into genericity begins at home. Brand owners should draw up and adhere to clear guidelines on proper trade mark use. Such guidelines should include use of the mark as an adjective rather than as a noun. Wherever reasonably possible, the mark should also appear in conjunction with a descriptive noun (eg “ACME chocolate”). In addition, a trade mark should ideally appear in capitals, stylised font or in some other manner that causes it to stand out from other descriptive wording on a pack or in advertising, thus emphasising its proprietary nature. Use of indicators such as ™ and ® where appropriate can also help.

    Where third parties—including customers—identify a brand owner’s products but refer to the brand descriptively, they should be corrected. CTM owners enjoy a right under Article 10 CTMR to have their brands described as a registered trade marks where they appear in dictionaries, encyclopedias or reference works, and this right should be enforced not only in respect of print works, but also in respect of widely-consulted on-line reference tools such as the Wikipedia site.

    Brand owners need to apply usage rules with discretion and commercial sense. However, protecting a brand’s clear origin message must remain the overriding goal. Such measures may be too late for Red Bull’s STIMULATION, but walking a consistent line on proper use may help others to avoid the horns of a similar dilemma.