The dream of any product line manager is for her trademark to become \u201ctop-of-mind\u201d amongst the consumer.\u00a0 In other words, when the potential purchaser thinks of the product, he will automatically associate it with the company\u2019s trademark.\u00a0 This level of recollection in a competitive mass consumer market, where the consumer can haphazardly choose between many similar alternatives, is the Holy Grail of marketing.<\/p>\n
Nevertheless, with the same conviction that the marketing department World defend this situation, the opposite occurs with the legal department. \u00a0But why is it that attorneys always find something wrong with a seemingly advantageous situation?\u00a0 The reason is simple, trademark law always seeks to ensure that the trademark serves its principal function: distinguish the product or the service from those other similar products or services that circulate in the marketplace.\u00a0 If the trademark does not serve this function, its registration will be cancelled.\u00a0 Precisely a situation where this occurs is when the trademark transforms itself into the common expression to generically identify the product or service.\u00a0 This transformation is powered by market agents who convert the trademark into the generic term to identify the product, thereby destroying its distinctive character.\u00a0 A typical example of this situation in Colombia is the term \u201cicopor\u201d to describe blown polystyrene (Styrofoam).\u00a0 Icopor was originally a trademark of BASF, but the use the marketplace gave it eventually transformed it into the common term used to refer to said product.\u00a0 Other illustrative examples can be found in the following webpage: www.fact-index.com\/g\/ge\/genericized_trademark.html.<\/p>\n
The foregoing phenomenon is commonly referred to as genericity of the trademark, and logically it is a situation the trademark owner seeks to avoid.\u00a0 Indeed, trademark law obligates the owner to take affirmative measures to avoid the genericity of the trademark.\u00a0 For example, Art. 169 of Decision 486 (the Andean Community IP Regime, which is applicable in Colombia) provides that the registration may be cancelled even in the mere tolerance o conduct that leads to genericity.<\/p>\n
Due to the nature of the genericity phenomenon, a trademark owner must adopt a strategy that seeks to modify market conduct, which is the motor driving genericity.\u00a0 What specific activities should a trademark owner avoid, and at the same time foster?\u00a0 The following is a basic list of recommendations:<\/p>\n
Taking legal action against third parties seeking to prevent incorrect use of the trademark.<\/p>\n","protected":false},"excerpt":{"rendered":"
The dream of any product line manager is for her trademark to become \u201ctop-of-mind\u201d amongst the consumer.\u00a0 In other words, when the potential purchaser thinks of the product, he will automatically associate it with the company\u2019s trademark.\u00a0 This level of recollection in a competitive mass consumer market, where the consumer can haphazardly choose between many […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_et_pb_use_builder":"","_et_pb_old_content":"","_et_gb_content_width":"","_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"footnotes":""},"categories":[49,50],"tags":[],"class_list":["post-5451","post","type-post","status-publish","format-standard","hentry","category-publications","category-trademarks-2"],"yoast_head":"\n