South Africa: IS BOOKING.COM A TRADE MARK?
IS BOOKING.COM A TRADE MARK?
“.com” domain names comprising generic words, such as booking.com, are very valuable pieces of online real estate. The question is whether these highly sought after generic.com domains qualify for registration as a trade mark. This was an issue recently decided by the Supreme Court of the United States.
Booking.com, the well-known digital travel company which provides booking services under the brand BOOKING.COM, applied to register four trade marks in relation to travel related services. All trade marks contained the term BOOKING.COM.
The United States Patents and Trade Marks Office (USPTO) refused to register the trade marks because it viewed the term BOOKING.COM as generic for the services in relation to which registration was sought and, therefore, unregistrable. The matter was pursued all the way up to the US Supreme Court, where the sole issue before the court was whether a generic word combined with .com was generic and, therefore, never capable of registration.
US trade mark law distinguishes between descriptive terms and generic terms. A descriptive term is one which immediately conveys information concerning a feature, quality or characteristic of a trader’s goods or services. A descriptive term is capable of registration, provided that the mark has acquired a secondary meaning through use, in that the consumers associate that term with a particular trader or its product. This is very similar to the position in South Africa, where it is also possible to register a term which is descriptive of the goods or services, provided you can show that at the date of applying to register the descriptive term, it has in fact become capable of distinguishing and has acquired a secondary meaning.
A generic term, on the other hand, is the name of a class of products or services and under US law, it is ineligible for registration as a trade mark. No amount of use of a generic term will render it eligible for registration as a trade mark. In South Africa, a generic term would not meet the definition of a trade mark and would similarly not qualify for registration in terms of Section 10(1) of the Trade Marks Act.
There was no dispute that the word “booking” was generic and could never be eligible for registration as a trade mark. The issue that had to be decided was whether booking.com was generic.
The USPTO adopted the view that the combination of “.com” with a generic term like “booking” was necessarily generic. In doing so the USPTO relied on Goodyear’s India Rubber Glove Mf v Goodyear Rubber Co., 128 U.S. 598 (1888), which held that simply adding a corporate designation, such as Company or Inc, to a generic term does not render a name eligible for registration as a trade mark. Similarly, the USPTO argued that Generic Company, like generic.com, could never qualify for registration as a trade mark.
Justice Ginsburg who the wrote the majority decision relied on three fundamental principles in writing the opinion of the court. First, a generic term names a class of goods or services (such as wine), rather than any particular feature or characteristic of the goods or services (such as smoky wine).
Second, where the term under consideration is a compound term, whether the term is distinctive depends on the meaning of the term considered as a whole and not by looking at its separate parts in isolation.
Third, the relevant meaning of a term is its meaning to consumers. Taking these principles into account, the question whether “booking.com” is generic depends on whether that term, when considered as a whole, indicates to consumers that it is an online hotel reservation service.
Justice Ginsburg noted that if the term “booking.com” was generic, you would expect consumers to understand Travelocity (which provides a similar service) to be a “booking.com”. Similarly, you would expect a consumer to query which is your favorite “booking.com” provider?
Justice Ginsburg held that consumers do not perceive the term “booking.com” as a class of service. The court held that because consumers do not perceive “booking.com” as being generic, the term is not generic and, therefore, eligible for registration.
The court rejected the USPTO’s suggestion of a blanket rule that all generic.com terms conveyed no additional meaning that would distinguish the services offered by one trader from those offered by other traders. The court ruled because domain names are one of a kind, a substantial portion of the public would view a generic.com term to refer to a specific business.
While the US Supreme court rejected the USPTO’s suggested blanket rule, it was not willing to adopt a rule that automatically classifies such terms as non-generic and, therefore, capable of registration. The court ruled that whether any given generic.com term is generic, depends on whether consumers in fact perceive that name as the name of a class of goods of services. Therefore, the onus rests on the trade mark applicant to adduce evidence to show how consumers perceive the generic.com term. Such evidence would primarily include survey evidence, but would also include dictionary definitions, usage by consumers and competitors and other source of evidence which could indicate how consumers perceive the term.
The USPTO’s greatest concern was that granting trade mark protection for booking.com would grant an undue monopoly over the word “booking”, which could lead to other traders being prevented from registering domain names such as “ebooking.com” or “hotel-booking.com”. The court ruled that that is a concern which is relevant to any descriptive mark and there are established doctrines in place, which prevent a trader being granted an undue monopoly. For example, where a trade mark incorporates descriptive terms, consumers are less likely to think that other trade marks that use the same descriptive terms emanate from the same owner. Even where consumer confusion exists, the doctrine known as “classic fair use” protects from liability anyone who uses a descriptive term “fairly and in good faith” and “otherwise than as trade mark”, merely to describe their own goods. Similar arguments can be made in a South African context.
Your take home points:
- It is possible to register a generic.com term as a trade mark. Doing so requires you to adduce evidence to show that consumers do not perceive the generic.com term, viewed as whole, as designating a class of goods and services. Such evidence would include survey evidence, dictionary definitions, evidence of use by competitors;
- The trade mark applicant will also have to adduce evidence to show that the term has acquired a secondary meaning through use; and
- Once an applicant has succeeded in overcoming these first two hurdles and secures a registration, it will have to bear in mind that the monopoly in the trade mark will be limited. Given the descriptive nature of the mark, it will be more difficult to show a likelihood of confusion if another party is using a similarly worded mark. The proprietor will also not be able to stop third parties from using the descriptive words.
- Whilst securing a trade mark registration for a generic.com term does place a higher evidential burden on the trade mark applicant, it is certainly worth protecting that prime piece of online real-estate. It is also worth securing a registration to prevent competitors from opening physical stores who adopt the same name or from diluting your brand by selling products bearing the well-known generic.com term.
This article is attributed to Alissa Nayanah, Senior Associate at Adams & Adams.
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