Vulgarization of trademarks or how to lose distinctiveness through over-popularity

April 2021

Kleenex®, Tipp-Ex®, Rimmel®, Velcro, bimbo® bread, aftersun® We have all used many of these words at some time in our everyday language to refer to certain products in a generic way, but the truth is that they are distinctive signs (trademarks) registered by their respective owners and not the generic term for a product.

Tissue, correction fluid, mascara, hook-and-loop fastener, sliced bread or moisturising cream after sun exposure would be the correct way to refer to the products we have just mentioned, since the above-mentioned words are trademarks, just as Coca-Cola is a trademark for its soft drink, and that does not mean that we call all other soft drinks Coca-Cola.

What is brand popularization?

A trademark arises from the need for companies to distinguish their products (and their values) from other products of competitors, but also from third parties involved in the market, as well as from competitors and professionals involved in marketing. When we set up a business or a company, we must decide, in addition to the name for the purposes of the commercial company, on the distinctive sign (trademark) by which we want to be recognized.

Thus, for example, one of the most famous manufacturers of the hook-and-loop fastener that has made so many basic aspects of our lives easier, decided to make itself known in the market as Velcro: as the Velcro brand. With the unexpectedly bad luck that in the end “Velcro” has become a word that directly refers to the product they sell (both themselves and other brands of hook and loop fasteners) instead of a distinctive and identifying sign of the company’s origin.

This is precisely what vulgarization of the trademark consists of: the distinctive sign has lost its capacity to distinguish its products from those of other competitors because consumers, appropriating the name of the trademark, begin to designate in a general way other product similar to the one distinguished by the distinctive sign with the name of the trademark. That is, they borrow the brand name and start to use it in a generalized way in common parlance, as just another word in the language.

Instead of speaking, in everyday language, of a hook and loop fastener, we speak about Velcro, when VELCRO is the trademark.

This phenomenon can basically be translated into the loss of the distinctive character that the sign initially had (given that it is a mandatory requirement to proceed with its registration) due to the excess of popularity acquired by the mark. It becomes so famous and so common in everyday language that it ends up becoming just another word used in the language in question.

Obviously, this can be a big problem for brands because, although every company wants its brand to be as successful and recognized as possible and become a renowned brand, they run the risk that, if the brand becomes too popular in the common language of consumers, it will become vulgarized, which can lead to the loss of the exclusive rights granted by its registration.

The vulgarization of a trademark occurs when a distinctive sign that has acquired a reputation becomes the usual way of naming the goods and services it protects in the market”.

It is important to note that this circumstance usually occurs in cases of distinctive word signs.

This phenomenon is regulated in Spain in Article 54.1.b) of Trademark Law 17/2001, which, as we said, provides for the loss of exclusive rights that the trademark grants its owner, through revocation:

“A trademark shall be declared forfeit by application filed with the Spanish Patent and Trademark Office or by means of a counterclaim in an action for trademark infringement: b) When in trade it has become, through the activity or inactivity of its owner, the usual designation of a product or a service for which it is registered”.

And likewise, in the Community regulation, Article 58.1.b) of Regulation (EU) 2017/1001 on the EU trade mark, which likewise tells us that:

The rights of the proprietor of an EU trade mark shall be declared to have expired, on application to the Office or on the basis of a counterclaim in infringement proceedings: if, through the activity or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered.”

As we can see, it is just as possible for a trademark to be revoked due to the inactivity of its owner (which is more logical) as it is due to its activity, which is where the case we are analyzing, consisting of the vulgarization of the trademark due to its excessive popularity, would come in, as it is clear that, in the latter case, the owner makes use of it through its activity in the market until it becomes so popular that it may become vulgarized in a totally unintentional way, which may threaten its survival.

How can we prevent the vulgarization of a brand?

The most important thing when we trying to prevent our trademark from being vulgarized or, once it has been vulgarized in the common consumer environment, and we want to disrupt such vulgarization, is to avoid inaction or inactivity on the part of the trademark owner. In other words, we cannot allow our trademark to be used inappropriately to designate other products of the same class in a general way, both by consumers and by competitors, and sometimes even by distributors and employees themselves.

To this end, and especially when the trademark has already been the object of vulgarization, the owner must be able to prove that he has done his part, that he has taken certain actions, to prevent this from happening or continuing to happen.

One of the most effective tools for combating the vulgarization of the trademark are marketing and advertising campaigns, making known (or reminding) the public that the company’s trademark as a distinctive sign of its products is precisely that, a trademark, and not the name by which the product or service in question is commonly designated. A trade mark over which the company also holds exclusive rights, which only allows the company to use the trade mark.

Obviously, another of the fundamental points when it comes to avoiding the vulgarization of the trademark is the importance of investing in its protection. We must register it to secure our intellectual property rights and use the ® or TM legends so that the public is aware that it is a registered trademark.

The AFTERSUN and VELCRO cases

The cases of AFTERSUN and VELCRO brands are two cases that show what to do and what not to do when fighting against the vulgarization of our brand.

AFTESUN case

The AFTERSUN case is an example of what not to do to avoid the vulgarization of our brand, i.e. to do nothing. Inaction or inactivity is what defines the actions of the former owner of the AFTERSUN trademark (Laboratories GENESSE), in order to fight for the preservation of its trademark.

In this case, the brand L’Oreal, totally unrelated to GENESSE, which among its line of products sells creams to relieve sunburn under the brand Garnier, wanted to use the term “aftersun” to add to these creams on the grounds that the term “aftersun” already lacked distinctive capacity since consumers identify it with the genre of the product and not with the company GENESSE, i.e. as an after-sun cream, in a generic way, and not as a trademark.

In this case, the Court[1] confirmed the revocation of the trademark “aftersun”, referring to the Supreme Court ruling of 22 December 2008, in which the High Court states that “in order to be able to appreciate vulgarization, an objective element is required, consisting of the fact that the trademark has become the usual designation of the product or service for which it was registered. (…). It is required that this change has taken place as a result of the activity or inactivity of the trademark owner“.

One of the means of evidence provided by L’Oreal was decisive, consisting of a report by a private detective who went to several different establishments specialising in perfumery and cosmetics, as well as department stores selling this type of product, asking the employees for the product “aftersun“, with the result that in all cases the shop assistants offered him a wide range of products of different brands. In other words, at no time did the shop assistants identify the sign AFTERSUN with the brand of Laboratories GENESSE, but rather with a type of product with different brands and marketed by different manufacturers.

VELCRO case

The case of VELCRO was different. VELCRO is perhaps one of the brands that has suffered most from vulgarization, since in practice few of us not refer to VELCRO when we talk about a hook and loop or hook-and-loop fastener system, but its marketing team carried out a campaign that turned out to be very successful.

Given the brand crisis caused by the vulgarization of its distinctive sign, and running the risk of losing its ownership due to the generic use of the term “Velcro” by consumers in common parlance, the company produced an advertisement in which the members of the company themselves clarified, singing, the technical and legal aspects of the correct use of the VELCRO® trademark.

In this advertisement, the brand pointed out that when consumers use “velcro” as a noun or verb (“I have a velcro shoes”), this undermines the importance of the brand, since the corporate origin of the hook-and-loop fastener is not always VELCRO, but there are other brands that market this fastener and are called by other names.

A good strategy on the part of the company that has helped to ensure that, for the time being, the VELCRO brand remains its own and has not become vulgarized. However, and although many of us consumers still use it in everyday language, the company in this case did do its part and took certain actions, showed activity, to fight against the non-vulgarization and protection of its brand.

Eduardo Zamora | Sara del Río.


[1] Judgment of the Provincial Court of Barcelona of 6 June 2018.