“Netbook” and Generic Trade-marks

American computer giant Dell Inc. has launched a challenge against Canadian computer maker Psion Teklogix Inc. and its ownership of the trade-mark NETBOOK.  Psion registered the mark NETBOOK in both Canada and the US in 2000 (based on its original application filed in 1996), and now Dell is challenging that registration.  Lawyers for Dell argue that Psion has abandoned the mark by failing to use it in connection with laptops, or alternatively, they argue that the mark is generic and therefore not eligible to function as a trade-mark, since “the primary significance of the term to the relevant public is as the name for small and inexpensive laptop computers.”  Psion has an uphill battle since competitors are using the mark in a generic way, and are even filing trade-mark applications, including for COBY NETBOOK, WIND NETBOOK and G NETBOOK for personal computers, all of which erode the distinctiveness of NETBOOK as a mark that identifies Psion. To protect this mark the owner will have to fight off Dell’s challenge, oppose the multiple trade-mark applications by competitors, then go out and sue infringers across the industry. 

A good example of a once-unique mark that has fallen into a “dead zone” which makes it expensive to salvage.  The lesson for brand owners is two-fold: use-it-or-lose-it, and fiercely defend at the first sign of infringement.

Related reading: Generic Domain Names in Canada  and Update: Generic Trade-marks  

Calgary – 10:30 MST


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