Adding GRANOLA to the mix? Reviewing the risks of genericism

The Federal Court's recent decision regarding alleged infringement of Sanitarium's trademark registration for GRANOLA highlights the importance of brand owners taking active steps to prevent their unique brands from becoming generic (Australian Health & Nutrition Association Limited trading as Sanitarium Health Food Company v Irrewarra Estate Pty Limited trading as Irrewarra Sourdough [2012] FCA 592).

The Sanitarium decision suggests that many Australians are unaware that GRANOLA is a registered trademark and simply take it to be a generic term.

Sanitarium, owner of Trademark Registration 32227 GRANOLA covering preparations made from cereals (among other goods), took infringement action against Irrewara's use of the term "granola" within the phrase "all natural handmade granola" on packaging for its cereal products.

Sanitarium's case failed. Notably weakening its case was evidence dating back to the 1970s of descriptive use of "granola" in Australia, including by eateries and manufacturers of breakfast foods, and the existence of various dictionary entries for the term - even though the word was an invented word and was registered by Sanitarium in 1912.

Genericide
This case highlights the real risk of losing one's brand to genericide.

Genericism is the phenomenon by which a registered trademark becomes the term by which a particular product or service is known. It is territorial – for example, Americans will ask for a glass of kool-aid (a flavoured drink mix), a word seldom heard or used in Australia.

Genericism is often the ironic result of a successful brand. Without exclusivity, a brand offers no competitive advantage in distinguishing a product. It simply gives competitors free rein to describe their competing products with what was once a monopolised term. Taken to the extreme, a trademark can become a term adopted in everyday language. For instance, we commonly refer to "escalators" (moving staircases) and "zippers" (temporary fabric fasteners) when these were unique terms at their inception.

What can trademark owners take away from the Sanitarium decision?
Prevention is the best cure and this adage also applies in the realm of branding. From the inception of a trademark, owners should avoid generic use of their own trademarks. Many companies fall foul of this rule.

The cardinal rule is to avoid use of the mark as a noun or verb. This includes avoiding use of possessives or plurals. The corresponding converse rule is always to use the mark as an adjective. Other common tips are to emphasise the brand (in font, capitals, stylisation and size), and to nominate an appropriate trademark symbol (eg, ™, ®) or trademark statement.

However, these basic measures may not be enough to shield against genericism. Looking at Sanitarium's GRANOLA oat product online or on supermarket shelves, the word GRANOLA certainly adopts prominent positioning, size and font, and is closely followed by the ™ symbol.

A strong mechanism for maintaining trademark hygiene (which Sanitarium may not have implemented) is to monitor the marketplace to prevent improper use by third parties. This should including monitoring the Trademarks Register and the National Business Names Register, and tailored internet searches. In today's online-focused marketplace, a monitoring programme should also encompass Facebook, Twitter, Pinterest and other social media sites.

If all else fails and your brand starts to look as though it may become a common term, there is always the chance to "reclaim" it with a corrective marketing campaign. This was most famously done with Johnson & Johnson's Band-Aid brand campaign in the late 2000s. While some may still refer to "Band-Aid" generically, Johnson & Johnson has obtained benefits from its campaign. Consumers realise on some level that "Band-Aid" is a brand – which may prompt them to recall the product descriptor. Anecdotally, medical practitioners refer to the product as bandages, plasters or plastic strips. Johnson & Johnson is surely in a stronger position than before its corrective campaign. Adding the term "brand" after Band-Aid emphasised the brand as separate from the descriptor.

Going back to the basic trademark rules above, Kleenex took similar steps to revive its exclusivity in the United States by adding the descriptor after the brand name. Lego apparently did this in the 1970s and 1980s, adding the term "blocks" after Lego. Adding the descriptor has the similar effect of distinguishing the brand – that is, from the descriptor.

A clever and humorous take can also help. The Xerox campaigns used clever puns, such as "If you use 'Xerox' the way you use 'zipper', our trademark could be left wide open" – thus making the point that it did not wish to lose its brand to genericide.

Of course, a corrective marketing roll-out should go hand in hand with other strategies. Critically, companies must ensure future correct trademark use themselves. They should also:

• Adopt vigilant monitoring and enforcement programmes.
• Actively correct any incorrect definitions in reference sources (eg, in dictionaries or Wikipedia).
• Educate the relevant trade.

Another strategic measure is to educate players in the branding arena, such as lawyers, attorneys, the media and advertising/creative bureaux to broadcast the message.

While Sanitarium's case failed, its GRANOLA trademark remains registered. It will be interesting to see whether Sanitarium launches a corrective campaign, or whether it attempts to enforce its rights in GRANOLA in future.

The value of a new and unique trademark is a powerful marketing tool. Thus, genericism is a back-handed compliment. The worst result of a successful brand campaign is to fall victim to the very PR which made the brand renowned.

If your brand plans have left you teetering between genius marketer and generic maker, take note of Sanitarium's folly and put some strategic thought into your media campaign to avoid forcing your trademark into early retirement.