Death of a Distinctive mark by Genericide

Discussion of Aktiebolaget Volvo & ors v. Mantis technologies pvt. Ltd. & ors.[29 June, 2020]

A mark is an image or face of the goods and services that its parents (Proprietors) always try to protect it from the outside world’s parasites but somehow it falls prey to the trap of genericide.

What does Genericide mean? What does it do to the distinctiveness of a trademark? These are some questions that trademark owners are not aware of and trademark lawyers must counsel them with means to combat the evil of Genericide. Genericide is the process or way through which a coined or arbitrary word loses its source distinctiveness and turns into a generic term. How does it happen you may ask. It ensues because of either excessive advertising or through widespread common usage. These are just illustrative factors and not necessarily exhaustive. The most famous examples of generic marks are- Escalator for moving staircase, Aspirin, Dettol, Cellophane, Xerox, Dalda, Thermos, Velcro, Maggi etc. These terms are coined terms, however unregulated use and consequent significant dilution of the terms, have made them more generic in common parlance.

Let us take daily life examples to fathom out this concept. We all in our day to day life, whenever the need arises for a duplicate of any document, visit ‘Xerox’ shop and ask a person out there to make a ‘Xerox’ of a document. The noticeable point here is that the correct word to denote a duplicate of a document is –‘Photocopy of a document and not Xerox of a document since Xerox being the Brand name of a machine which facilitates the copies of a document. Owing to such mistake in using a term interchangeably, the petition was filed before IPAB, in Mr.B.V.Ilango v. M/s Rank Xerox Limited,[1] for the removal of a mark -Xerox, as being used as a synonym for photocopying. Though Board rejected the petitions but observed that Xerox indeed in a precarious position and must act pro-actively to its untimely death. Since it was timely cease and desist notice sent by the respondent which saved the life of a mark. The board remarked that “if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as a generic term.”[2]

In Tandem, to what the Indian IP board held, it is imperative to bring out the infamous American ‘thermos’ case [3]where due to inability of an owner of a mark -thermos, to stop others from using the said mark vis-à-vis insulated bottle, resulted in an extensive loss in his trademark rights in the mark -thermos and sequitur follow as other insulated Vacuum flasks are being called ‘thermos’ as well. I reckon that is true if we look back in our life as how these words are used.!

Another example could be of Vaseline. Vaseline is the brand name for a product-petroleum jelly, discovered in 1859 by Robert Augustus Chesebrough and registered as a trademark in 1877. It is often used as a lubricant or as a moisture insulator for local skin conditions characterized by tissue dehydration. Vaseline is seen used as a noun or a verb for a Petroleum Jelly by its users. We all must use the word petroleum jelly instead of Vaseline while spelling out this product. The Fun Fact is that in Portugal the Unilever products are called Vaselina, and in Brazil and some Spanish-speaking countries, the Unilever products are called Vasenol, as a generic for Petroleum jelly.

Similarly, a case currently listed before the Delhi High court caught my attention lately. The case involves  Aktiebolaget Volvo & Ors v. Mantis technologies pvt. Ltd. & Ors.. This case is still pending and the hon’ble high court has granted interim injunction till the pendency of the suit restraining the defendants from using certain websites encompassing the word – Volvo.

A summary of the case is as follows. The case proceeded on its first date ex-parte since nobody appeared for the alleged respondent infringers. The Plaintiffs averred that they are the exclusive proprietors of the ‘registered trademark’ ‘VOLVO’ and have been engaged in the manufacturing of LUXURY automobiles since 1927and the defendants who are in the business of providing travel and tour services and other incidental services are using the registered trademark ‘VOLVO’ as part of their domain and trading name.

The respective logos of the plaintiffs and information of defendant’s domains are as inter alia-

Description: A screenshot of a cell phone

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Description: A screenshot of a cell phone

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The court concurred with the arguments and evidence proffered by the plaintiffs and was able to establish a prima facie case in their favour and restrained the defendants from using the registered trademark VOLVO as part of their domain names, website, email address and tradename.

A question that emerged in my mind and can/may be a matter of arguments for the defendants to defend their use, is, why only “VOLVO” was chosen by the defendants albeit the existence of brands like Mercedes, Ashok Leyland, Tata Marcopolo, JCBL buses, etc.

Any answers to that? For me and defendants if they argue, it can be a case of genericide. Volvo now a day is seen as a segment among buses, if anyone prefers and can afford, for long journeys. In other words, it can be better understood this way- a train has coaches like a sleeper, 3A, 2A, CC, 1A, etc and consumers pay for them according to their purchasing power and suitability. Likewise, buses also have segments/coaches such as AC buses, Non Ac buses (Haryana roadways, Uttar-Pradesh roadways, Uttarakhand Roadways), Sleeper buses, etc. and When it comes to comfort or air-conditioned buses,  consumers can often be heard saying “I will book volvo”. What does this mean? It means that they are referring to the product ‘volvo bus’ and not the brand ‘VOLVO’. I used lowercase ‘v’ to signify the product and Uppercase ‘V’ to signify the brand. Usually, brands are presented with Uppercase letters.[4]

This is what appears to be happening with Volvo. People are seeing Volvo as a product and not a brand name because of its continuing common usage vis-à-vis comfort and luxury buses. VOLVO as a brand has submerged due to genericide (only in the cases of buses). This could be a reason why the defendants chose volvo and not any other brand to show the segment of buses the customers can book their tickets for. For them as well as for the average man, Volvo refers to any bus equipped with an AC and is comfortable and nothing else. As the case is sub-judice, it is better not to comment further until the final decision of the court.

All the discussion in this article are for reading and learning purposes only and have no direct consequence on the case. The opinion of the author are his personal views and are not part of the submissions of the respective counsels of the case which may vary as the case proceeds.

[1] Mr.B.V.Ilango vs M/s Rank Xerox Limited IPAB order no. 229/2012 on 21/09/2012

[2] Id.

[3] American Thermos Products Co. v. Aladdin Industries, Inc, 207 F. Supp. 9 (D. Conn. 1962)

[4]Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184 (TTAB Sept. 6, 2017), In this case the registration of the mark ‘Pretzel Crisp’ was in question being hit by genericism. The court made the observation while appreciating the evidences, that most of the people use ‘pretzel crisp’ in common parlance rather ‘Pretzel Crisp’ that shows that while using the term pretzel crisp, customers are referring it to as a product and not relating it to be as a brand.

About Pranav Gupta 0 Articles
I am Pranav Gupta. I have enrolled my self as an Advocate on the roll of Bar Council of Delhi in 2018 and also a member of Delhi High Court Bar Association. I am recently graduated from NYU School of Law wherein I was pursuing my LLM degree in Intellectual Property Law. Previously, I have worked as a Law-cum-Research Assistant in the Supreme Court of India. Moreover, I have obtained my Bachelor's degree in Law from Amity Law School, Noida with a specialization in IP.

1 Comment

  1. Good article. Thank you for writing. I think it’s not only genericide for the trademark VOLVO, but also many luxury buses/service provider companies are blatantly copying the design of the rear engine buses to lure the customers. On the face of the body it looks like a rear engine bus (volvo) but is nothing but a regular air suspension vehicle fitted with higher body and big flat windows.. ultimately compromising the aerodynamics and safety of the passengers.

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