Jandal caught in tide of genericide?

Wednesday 12th February 2014

Can you handle the JANDAL scandal? Never was a situation more destined to become an article given the colloquial phrases available.  All jokes aside, however, the central drama of this tale, being the genericide of registered trade marks, is no laughing matter for the owners of very well-known and, therefore, valuable trade marks. 

It was reported in the media recently that an online discount apparel store by the name of Lastseason.co.nz received a cease and desist letter from Sandford Industries Limited, being the current owner of the JANDALS trade mark.  This letter demanded that Lastseason.co.nz cease use of JANDALS in relation to an iconic style of footwear.  In response, Lastseason.co.nz took the issue to the media[1] stating that they thought the word was a commonly used term and not a trade mark.    One of the directors of Lastseason.co.nz is even quoted as saying that the big corporates were coming in and stomping on all the fun.[2] 

So knee jerk attacks on ‘big business’ aside, what is all the fuss about?

Once a registered trade mark becomes, through the acts or inactivity of the owner, a ‘common name in general public use for a product or service in respect of which it is registered’[3] it is vulnerable to removal from the Trade Marks Register in New Zealand.  Examples of removed trade marks from around the world include, STIMULATION (Red Bull), PILATES, ASPIRIN, THERMOS, ESCALATOR and, depending on the eagerly awaited decision of the High Court in Tasman Insulation v Knauf Insulation, BATTS for insulating materials.  

Many commentators are saying that Sandford will have difficulty enforcing its rights as the JANDALS trade mark is now a commonly used or generic term.  Once a trade mark has become generic, it is very hard to claw back rights in the trade mark.  The best approach is, therefore, to proactively protect the mark from genericide in the first place.  Something that Sandford may soon learn to its detriment. 

[1] Jenna Lynch, “Retailers Face Jandal Scandal” see: http://www.stuff.co.nz/dominion-post/business/9640998/Retailers-face-jandal-scandal, last accessed 11 February 2014.
[2] Above no. 1, last accessed 11 February 2014
[3] Trade Marks Act 2002, s66(1)(c)

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