In 1892, in the result of research findings in the field of cryogenics the Scottish scientist Sir James Dewar developed and invented the vacuum flask, otherwise known as the Dewar flask.
The Dewar flask was promptly commercialized when two German glassblowers, Reinhold Burger and Albert Ashenbrenner, in 1904 realized that the flask may be used for maintenance of drinks’ temperature. The embodiment of the Dewar flask has never been patented but the German entrepreneurs used another name – «Thermos» that was later registered by them as a trademark. Sir James Dewar failed to protect his rights to the invention.
After this, the technology was sold to the Thermos Company which used it for mass production of vacuum flasks for home use.
The production and productivity of the «Thermos» bottle were significantly improved by the Vienna inventor and entrepreneur Gustav Robert Paalen. He was developing various types for domestic use which were also patented by them and widely distributed through the American Thermos Bottle Company in the United States and Canada.
Later, the name became a catch-all one after the term «thermos» had become a generic term for such vacuum flask. The sign «Thermos» is still a registered trademark in several countries but in the majority of countries this sign transformed into a commonly used one. In 1963, in the United States a trademark «Thermos» was recognized under court procedure as a commonly used sign for all vacuum flasks.
The first U.S. patent on a yo-yo type toy was granted in 1866 to James L. Haven and Charles Hettrick (U.S. patent 59745) under the name of the whirligig. The popular toy gets its current name from the name of Yo-Yo Manufacturing Company (established in 1928). But in 1965 the U.S. Court delivered a judgment in favor of Royal Tops Manufacturing Company and recognized «Yo-Yo» trademark as a commonly used sign. Legal costs caused by court battles and other financial straits led to the sale of the company and intellectual property objects associated with it in 1968.
In 1900, inventor Charles Seeberger (Otis Elevator Company) received titles of protection for a trademark «ESCALATOR». The competitors and producers of escalators were forced to call their products as the motor or electric stairways. Everything changed in 1950 due to a court case Haughton Elevator Co v Seeberger. The judge ruled that this sign had become a commonly used one through the negligence of Otis Elevator. The company used the word «escalator» along with a generic term «elevator» in the advertisement as well as used the sign «Escalator» in contrast with the «ESCALATOR» that was claimed in the application.
In the United Kingdom and in many other countries the «Cellophane» is a registered trademark that is owned by the company Futamura Chemical UK Ltd, based in Wigton, Cumbria, UK. In the United States and several other countries the «Cellophane» had become a commonly used word and is often unofficially used for indication of a wide range of products made of polyethylene sheeting, even those which are not made of cellulose, for instance plastic films.
In Ukraine, a vivid example of the transformation of a trademark into a commonly used sign is the transformation of a mark «Тамянка».
The Economic Court of the City of Kyiv by its decision from 11.04.2016 in the case № 910/28726/14 on the suit of the Limited Liability Company «Sandora» (hereinafter referred to as the «Sandora» LLC) suspended a certificate of Ukraine № 109692 for a trademark «Тамянка» which was owned by the Private Joint Stock Company « Alef-Vinal »( hereinafter referred to as the – « Alef-Vinal » JSC) due to the transformation of a mark into a sign that became a commonly used one after filing of the application.
The «Sandora» LLC is the owner of the certificate of Ukraine № 75194 for a mark for goods and services «Праздничная Коллекция Тамянка» (word mark), the date of filing of the application – 07.02.2007. The defendant owned the rights to a certificate of Ukraine № 109692 for a trademark «Тамянка» (application dated 05.05.2006).
The Court found that the word «Тамянка» is used not only by the defendant but is also used for the indication of the following:
– a grape variety;
– a certain type of wine that is confirmed, in particular, by manufacturing specifications;
– labeling of products, in particular bottles and other packages of wine, by various manufacturers who are independent of each other (the repeated use is proved, in particular, by the information that from 2010 to 2014 only the plaintiff produced and sold 3 946 481 liters of wine «Праздничная Коллекция Тамянка»).
Thus, the Court decided that a trademark «Тамянка» had become a commonly used sign after the date of filing by the defendant of the application for its registration.
The Kyiv Economic Court of Appeal and the Higher Economic Court of Ukraine decided to uphold the decision of the Economic Court of the City of Kyiv.
As of today, trademarks like SCOTCH®, XEROX®, JEEP® and KLEENEX® are on the way of transformation into commonly used signs. In view of this, the rightsholders hold aggressive advertising campaigns in order to avoid transformation of these trademarks into commonly used ones.
The examples of such advertising campaigns are the following:
Xerox Corp.’s: «You Can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier».
Chrysler LLC’s: «They invented “SUV” because can’t call them JEEP®».
Kimberly-Clark Corp.’s: «Kleenex» is a registered trademark and should always be followed by a ® and the words Brand Tissue. [Kleenex® Brand Tissue] Help us to retain our identity».
In order to avoid transformation of a trademark into a commonly used sign the rightsholder should:
- Respect the following rules of the use of a trademark:
– to use a trademark along with a generic term.
– a trademark should not be identified with a generic term of goods.
– a trademark should be used in a manner that it is distinguished from the text which a trademark contains by using distinctive font or a capital first letter of a trademark etc.
– a trademark should be followed by the symbol of protection «®» (R in a circle) or a «ТМ».
– a trademark cannot be shortened, declined, become a verb or participle, be used as a slang term or be changed in any other manner.
- Prohibit illegal use of a trademark by third parties;
- Raise public awareness about rules of the use of a trademark;
- Control proper use of a trademark by third parties.
Author: Bohdan Kuchai
Reprinting, full or partial copying of the text of this article, its translation, posting of the article or its translations at other Web-sites or other Internet-resources, any other use of the article without written consent of the author are strictly prohibited. The violation is punishable in accordance with the Law of Ukraine «On Copyright and Related Rights”.