Written by Karin Pomaizlová, a partner in the law firm Taylor Wessing in the Czech Republic
Do we drink becherovka or Becherovka? Do we prefer míša and mrož, or Míša and Mrož? Do we drink beefeater or Beefeater? Do we drive mercedes or Mercedes, eat häagen-dazs or Häagen-Dazs? This article mainly reflects on practice we have seen in Czech media.
In this article I address the correct differentiation between trademarks and common generic expressions. The correct answer cannot be found in grammar books or prescriptive dictionaries, but in the trademark registry. The basic function of a trademark is to differentiate the goods or services of one entrepreneur from the goods or services of other entrepreneurs.
A trademark facilitates the quick and unambiguous identification of the origin of a product or service, helps its owners build the reputation of a brand, and serves as motivation to innovate, improve quality and preserve traditions. From the legal perspective, a trademark is a mark which explicitly protects the registered goods and services of its owner. From a grammatical perspective, a trademark can be regarded as a proper noun; the name of a specific product or service. Thus, we drink brandy, vodka or herbal liqueur, but Finlandia vodka, herbal liqueur Becherovka; we buy fruit ice cream, but "We Czechs prefer Mrož" and we eat Magnum not magnum ice cream.
If in written form we use small initial letters for writing trademarks, contrary to the rules of grammar, we are helping to ensure that the general public does not perceive that trademark as its own name, but it may incorporate such marks into its vocabulary in the sense of a mark of a specific type of product in a generic sense. Thus, over time, ignoring grammar may lead to a trademark becoming perceived as a type of goods or services.
To a certain extent, the threat of becoming generic in particular dangerous to innovative products that have a trademark which is an easy-to-remember and pronounceable name; a name people start to use not only for the mark of the product of a specific manufacturer, but also for later products made by other manufacturers that have the basic features of the original innovative product.
How to prevent the use of a trademark as a generic name? Especially for innovative products, there is a fundamental way to prevent such a risk, if when launching a new product on the market the manufacturer simultaneously together with the trademark offers the public also a generic name that they can use to describe categories of similar products, which at the same time is completely different name than that of the trademark. Such is the case with the new generation of mobile phones which have become known under the generic name of "smartphones".
In the event of the improper use of a trademark in dictionaries as a common expression of a type of product or service , the owner of the trademark can demand that the publisher properly designate it, whether verbally or by using the legal symbol for a trademark: ®.