Overcoming the loss of trademark rights because of a trademark’s overpopularity

Trademarks which are well established on the market or are widely known run the risk of becoming generic words for the goods/services they cover.

French and Community regulations provide that a trademark can be revoked if, because of acts or inactivity of its owner, it has become the common designation of the products/services in respect of which it is registered.


The first act a trademark owner should take in order to avoid facing this situation is to publish advertising in specialized and or large public magazines or revues providing public notice of its trademark rights. MICROPETS for instance published the following insert: Micropets is a registered trademark of Tomy Company Limited.

The design and models are registered and protected by the designs and models law as well as by the trademark law. The specifications of the goods are protected by international patents. Consequently, Tomy Company Limited has the right to take any legal measure against the manufacture or the importation of counterfeits of these patents and registrations.

Various complementary measures can also be applied:


– Apply trademark, domain name, and web pages watches with a view of being prepared to adopt any necessary defence measures;

– Avoid using the trademark in a generic manner in the communication and advertising;

– Adopt a strict presentation of the mark (initial letter of the mark in capital letter or all the mark in block letters) placing the © or ® symbols in close proximity;

– Systematically enforcing the trademarks rights against all erroneous and inappropriate use of the trademark in dictionaries, newspapers, advertising, and against third parties. Community Regulations have a special provision to rely on when a Community registered trademark is not presented in dictionaries as being the registered intellectual property of its owner.

GOOGLE recently provided a good illustration of good strategies to use in preventing a trademark from becoming generic. Cease and desist letters were sent and a large communication campaign was launched insisting on the fact that GOOGLE refers only to Google Inc and its services and not to internet searches in general. 


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