Is Generic.com no longer generic?

Monday 29 March, 2021

Choosing a brand name for your company, or for your products or services can be difficult. The purpose of a brand is to serve as an ‘origin identifier’, to differentiate yourself from your competitors. Often traders choose generic brand names. A generic brand name is one that is commonly used to describe the actual product or service or some other characteristics. For example, “Iced Coffee” for a prepackaged iced coffee range. It is tempting to choose a generic brand name, so customers can easily identify you or your products or services. The problem is that a customer won’t be able to distinguish you from any other trader.

What does this mean for New Zealand?

Generally, the Intellectual Property Office of New Zealand (IPONZ) will refuse to register a generic or descriptive trade mark. Simply, it will not allow generic or descriptive brand names as trade marks because they are descriptive and not ‘distinctive’ in character.

So how does this translate to a ‘generic term’ with .com or .co.nz? In New Zealand, a trader would likely require evidence to show IPONZ that the brand has ‘acquired distinctiveness’ over time and is recognised by consumers. In addition, be aware that registering a domain name like Booking.com as a trade mark does not give you rights over the word ‘Booking’ by itself, only when it is combined with .com.

The approach further abroad?

In 2020, the US Supreme Court decided that a domain name could be protected as a registered trade mark, even if the domain name was a generic term. Booking.com, a travel company that offers online booking services for flights, rental cars and hotel reservations applied to register Booking.com as a trade mark in the USA.

The initial application was refused because it was generic. The case was appealed to the US Supreme Court which held that Booking.com could be registered as a trade mark because it was not generic to consumers. Consumers might ask another traveller who their favourite booking provider was but would not ask who their favourite ‘booking.com’ provider was. The outcome is that traders in the USA can now register generic terms combined with .com as trade marks, provided that the combination distinguishes it from its competitors.

Before you register a trade mark, we recommend you consult your intellectual property lawyer. We can advise you on the strength of your proposed brand name, its likely registrability, and whether it is likely to infringe any existing trade marks.