“Don’t photoshop your photos so much”. As a photographer, I was obviously offended by my friend’s comment, but as a lawyer, I was amused. Photoshop is only one of Adobe’s photo-editing apps. Adobe also supplies the more advanced Lightroom. Photos can also be edited using Google’s Picasa and Apple’s Aperture. I had edited the photo in question — just a little bit of course — using Instagram. The term “photoshop” however, has almost become synonymous with the act of editing a photo. Has Photoshop become a generic mark?
Generic marks are used to identify a single product and a whole class of similar products. It is very difficult to get such generic marks, words, or symbols, such as “toy trains”, “cars”, and “milk”, registered.
Certain marks however, start out as a distinctive mark (registered or not) but in due course, end up becoming a generic term. The distinctiveness of the mark is lost, eroded, or diluted when other traders or users use the same or similar mark in relation to the same or similar goods or even totally different goods. This is often referred to as “genericide”. (See, Pamela S. Karlan at 390.)
A famous example of genericide is what happened to the term “thermos”. This term was first used to refer to the brand of containers made by the King-Seeley Thermos Company (See, Zoe Argento at 333). Soon however, the Ninth Circuit in United States of America held that the term had entered the public domain and that the manufacturer’s competitors were free to use the term to describe their products (See, King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963) at 578).
Genericide in relation to trademarks also happened to the following terms:
(a) “escalator”, originally a trademark of the Ottis Elevator Company;
(b) “aspirin”, originally a trademark of Bayer AG;
(c) “yo-yo”, originally a trademark of Duncan Yo-Yo Company and;
(d) “Walkman”, originally a trademark of Sony.
In India, terms like “Bisleri”, “Cadbury”, and “Xerox” are few examples of terms that are often used as generic terms.
There are two likely explanations for why a mark becomes generic. A product may become so dominant in its market that consumers start to associate the product’s name with the entire category. Secondly, the mark itself may be a useful shorthand for a product that would otherwise take a lot of words to describe (See, Karlan at 391)
A company therefore, has to continuously market its products and marks in such a way that the mark does not become generic. It also has to be consistently vigilant in relation to any form of infringement of their mark. Sometimes however, even after such marketing and vigilance, the mark may end up becoming generic. The Austrian Supreme Court had ruled against Sony stating that “Walkman” is defined as a noun in the Concise Oxford English Dictionary. Adobe needs to make sure that “Photoshop” does not enter generic language.
(Samar Jha is part of the faculty on myLaw.net.)