When my son said he had "voied" from Hegdehaugsveien to Youngstorget, I realized something was going on with the Voi brand. Later I heard Voi's general manager, Christina Moe Gjerde, say she was proud that the company's name had become the verb for using electric scooters. Agreed; they are thus market leaders within their industry.
DNB was early on in using the verb "to tilt". They introduced the verb themselves as a marketing strategy, and contacted the Language Council to get the word into the dictionary. Other "verbs" are made by consumers, often without the trademark owner himself wanting it. Examples of such verbing are to tinder (that is, to use the app Tinder), to tweet and to google. Some hubs, and many snappers. Something we did a lot in the past is Skype. But, do we always mean the trademark Skype or can it just as well be a chat in Teams when we say "We skype"? And if it is to be photoshopped, can it be in image editing services other than Photoshop?
It's fun to follow new companies that innovate, think new and challenge established mindsets. I thus got a little push to challenge my "childish learning" about trademark use. What actually happens when new products create new words in the language, both as nouns and as verbs? Is it detrimental to the value of the brand, or is it a commercial success to be the verb?
The functions of the trademark
One of the trademark's most important functions is to show the product's commercial origin. The trademark shows who stands behind the product and can guarantee its quality. If the trademark becomes synonymous with a type of product or service so that it is just a common word in the language, it is in danger of being degenerated (or appellativized according to the Norwegian Academy's dictionary). A degenerate trademark thus loses its distinguishing function.
Verbifying a trademark can therefore be a double-edged sword. If someone claims that a trademark has degenerated, the legal consequence may be that the trademark is deleted from the trademark register if this has occurred as a result of the trademark holder's actions or lack thereof (passivity). If the trademark ends up in official dictionaries without it being marked that it is a trademark, or even worse - that the dictionary states that the trademark has been appellativized, you should react quickly if you want to preserve the trademark as such. (The discussion about who decides that a trademark has been appellativized is also interesting, but will have to wait for another time...).
Examples of trademarks that have ended up in the dictionary are:
- thermos
- styrofoam
- still
- stressless
- teflon
For the record — several of these are still valid registrations in the trademark register, and the Norwegian Patent and Trademark Office treats them as valid registrations until they are no longer renewed or competitors demand that they be deleted from the register.
Nylon is an example of a trademark that no longer appears in the trademark register due to degeneration. If the trademark is no longer protected under the Trademark Act, the only hope is that you can have some protection under the Marketing Act.
– When a brand or product is converted into a verb, it is called "becoming the verb". Is there a financial gain in bringing about such popularisation, or on the contrary a danger of washing the brand away?
Solrun Dolva
Solrun Dolva
Potato crisps – Maarud's gold or our everyone's potato chips?
The so-called "potatogullsaken" was a court case between Maarud and Orkla which was about who had the right to use the term potategull for potato chips. Orkla wanted clarification on whether potato chips was a common word in the language for a type of snack, while Maarud wanted confirmation that they had the exclusive right to use the word potato chips commercially. Maarud had produced and used the word potato chips since 1936, and had a registered trademark. Now they saw that the value of the trademark was at stake due to degeneration, and therefore wanted to prevent competitors from using it generically. Maarud lost the case for exclusive rights to the gold. The court said that the trademark had lost the necessary characteristics of distinctiveness it had previously had.
It is not always so easy to know when a brand has degenerated, but Synnøve Finden found out painfully when they launched a "jarlsberg cheese" type of cheese in 2016. Tine won in court that Jarlsberg was still known as Tine's trademark, and not just as a Swiss-type cheese.
When the trademark loses its characteristic function
Traditionally, we have mostly seen the danger of degeneration of trademarks used for goods. If someone has launched a new product that is so original that it has not yet been given its own generic name, there may be a danger that the trademark will "become" the product. Mixmaster, teflon, post-it and buff most people associate with one type of product, but they are all registered trademarks for a new type of product.
Even where you have a large market share of a product, there can be a danger of degeneration on the way. Apple's trademark Ipad® is marked as a trademark in the Norwegian Academy's dictionary, and given their large market share in tablets it is probably a good idea.
Is there the same danger of degeneration of the trademark when it is used as a verb as when it is used about the product itself? Or could there be a difference between the product potato chips and the service Google? Is it easier to maintain the identity of the brand while using the verbiage to strengthen your market position? Initially, it is easy to think this, because we have seen several examples of trademark holders who, despite verbing, manage to maintain a strong trademark. Google is one such example. Nobody thinks that the giant Google is significantly weakened, even though we all say "google" regardless of the search engine we use. In 2014, one person did indeed demand that the trademark Google be deleted from the American trademark register due to degeneration. The court did not agree with this, as long as Google is still associated with one particular search engine.
Three tips
How is it then? Is the old lesson about trademarks obsolete, or do those who build themselves up under the verbiage of the trademark live dangerously because they dilute their own trademark? Awareness of the use of a trademark is in any case important when creating your trademark and marketing strategy. The Norwegian Patent Office therefore has no definitive answer to the introductory question, but is happy to share three tips:
- Use the trademark actively in capital letters and as a trademark. By using the letters TM after the trademark, you can mark that it is a trademark and not a generic product.
- Feel free to register your trademark in the trademark register to document your right. You can then use ® after the trademark to show that it is a registered trademark.
- If competitors or the general public start using the trademark as the common word for the product or verbs, you need to take a stand on whether this is something you want to develop or not. You can through campaigns etc. inform the consumer that it is actually your trademark and not for free use by others.
