Abstract
This article discusses the transformation of a distinctive trade sign into a generic term. Any distinctive trade sign carries this risk, primarily if it benefits from a high level of reputation or prestige, and the product identified is unique in the market. This is probably the most critical danger for such signs, especially if they are industrial property rights. Several criteria have been developed to determine if a sign has been transformed into a generic term. These criteria have economic and political relevance, as genericness is not a trivial issue. The European Court of Justice (ECJ) has taken a position in this matter, as have the European Union Regulations on trademarks and geographical indications. However, the bilateral and multilateral agreements are the critical arena for conflicts concerning geographical terms’ qualification as common terms. The European Union (EU) and the United States (US) have been in the spotlight for a long time, while China is also reaching a prominent place in this dispute. The most recent bilateral agreements have been twisting the criteria applied when assessing a geographical term’s genericness.
Highlights
To be recognised as an industrial property right a trade sign must comply with its legal function, namely distinctiveness
The European Union (EU) and the United States (US) have been in the spotlight for a long time, while China is reaching a prominent place in this dispute
This means that a sign may be protected as a geographical indications (GIs) or a designations of origin (DOs) if it has distinctiveness, i.e. it can distinguish a product from a specific geographical origin from similar products produced by other companies and coming from other geographical origins
Summary
To be recognised as an industrial property right a trade sign must comply with its legal function, namely distinctiveness. We are evaluating the distinctiveness of the sign (the ability of the sign to accomplish certain legal functions), but the extinction of an industrial property right over a sign has severe consequences for that right’s owner; more severe than the refusal of registration or protection of the sign as a DO or GI This is especially true if the extinction of the right owing to genericness is a consequence of the success in the market of the sign protected as a DO or GI (a success due to the owner’s activities: promotion, publicity, high quality of the product, and the prestigious image of the sign, for instance).
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