By Omoruyi Edoigiawerie, Esq
Start-ups spend a lot of time, energy, and resources developing their corporate name, symbols, and logo.

The next most important thing is to safeguard these key elements of their brand and that is why trademark protection exists for this purpose.

Many start-ups proceed to register their trademark and erroneously conclude that it is all they need to do to protect their brand.

However, trademarks are valuable tools for businesses to compete in the market.

A lot of competition centres on trademarks, which gives rise to unfair competition or unlawful use of the trademarked brand name or logo of similar businesses that are well-known or famous in the same sphere of business.

Let me point out that even though direct infringement of trademarks is met with legal resistance and gives rise to legal claims against those in default, some businesses now deploy mischievous means to exploit the name or brand effect of well-known or famous trademarks.

This, therefore, means that start-ups with established name brands should, in addition to preventing unlawful use of their trademarks, be constantly vigilant to avoid the risk of their trademarks becoming generic names as a result of dilution.

The risk of genericity is a common problem for trademark owners. The main reasons include low distinctiveness of the mark, improper use and management by its owner, intentional dilution by competitors, and long-term monopoly of products.

A trademark becoming a generic name can result in the loss of the trademark’s functions and use, hence the cancellation of the mark, so startups must ensure that they prevent their trademark from becoming generic.

Generic terms are terms or names that are common to a course of trade or a particular product and therefore any person manufacturing products in that class of products is free to use the term/name. Such names are no longer registerable as trademarks.

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A valid trademark can only become generic if the consuming public misuses the mark or name so much so that it becomes the generic name of the product. This is technically referred to as ‘genericide’.

Genericide refers to a trademark that is validly registered as a trademark but due to its constant usage and popularity (dilution), consumers have come to associate the class of products with that trademark name, by so doing the trademark loses its distinctiveness or distinguishing nature and become a generic name.

The danger of genericide for a trademark owner is that the trademark will be struck off the register of trademarks and the public will then be free to use the trademark name without any legal inhibition.
The above premise is predicated on the fact that trademark law specifies that a trademark’s essential feature is that it can distinguish the goods of a natural person, legal person, or other organization from those of others.
As a distinguishing mark, a trademark is not the same as a name of a good. In some cases, however, businesses unconsciously use their trademarks as names of goods, which gradually dilutes the distinctiveness of these trademarks and eventually causes them to become the names of goods.
If a start-up’s trademark is frequently used to describe a certain category of good or service, it will probably soon be reduced to the generic name for that category of good or service.
In particular, both the scope and the frequency of trademark use are on the increase in this digital age and era of the internet. It is therefore essential that startups who have dissipated their energy and resources building their brand should mitigate the risk of their brand name being diluted into a generic name.
It is often the case that to build the business, Startups want their brand name on the lips of every consumer in the public to create the desired market presence, the risk of this is that once the name is reduced to a generic name, consumers will equate the brand with a certain category of goods, and this brand will, in turn, lose the function of distinguishability from other brands.
This means that the trademark name or brand will no longer be protected by law, and competitors may freely use it.

It is, therefore, important that businesses keep the above in mind and understand the real value of having a registered trademark, which is; the distinguishability among products or services in the same class.

Many trademarks that became diluted and categorised as generic did not set out to be generic names in the beginning, but due to improper use and poor brand management by the trademark owners, the distinctiveness of the trademark diminished and the trademark become the generic name for goods in that line or class of business.
To ensure that they are not caught up in the web of trademark dilution and prevent a plunge into the pit of genericide which ultimately leads to trademark cancellation, startups should take the following precautions:

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1. Use highly distinctive words or characters to register their trademarks. This reduces the likelihood of trademark dilution.

2. Ensure proper use of their trademarks and the tightening of the management of their trademarks at the same time. For example, while advertising, use the trademarked name alongside the general name of the good or service where this is applicable.

3. Avoid directly substituting the general name of a product with the trademarked name in marketing; and avoid unduly emphasizing the trademark in the advertisement.

4. Always clearly display the sign of the registered trademark, “®”, on the name and brand representation and in related descriptions.

5. Keep a close watch on the market at all times and carry out market/industry investigations to prevent dilution and where it becomes evident that their trademarks are in danger of becoming generic names, startups should proactively take legal measures to prevent this by protecting the legally registered distinctiveness of their name and ensuring that all unauthorised use is stopped.

6. Develop a practical trademark branding and development strategy. This is often done by registering other ancillary trademarks and defensive trademarks based on the principal mark while also activating product diversification when necessary.

The above precautions reiterate the fact that Startups cannot afford to rest on their oars after trademark registration especially when their businesses begin to grow and their trademarks begin to enjoy public acceptance and acclaim, they must remain constantly vigilant to prevent the generic use of their trademarked name by competitors, the media and the end consumers.

Finally, start-ups must ensure that they not only value trademark registration, but also trademark use and management. It will be an unwise decision to value brand promotion and neglect brand protection.

An all-encompassing approach should always be adopted to ensure that their trademarks remain their valuable brand assets. This is necessary because a start-up’s brand name is one of its most important assets, it not only defines its business objective, edge and direction, but it also plays a pivotal role in determining its commercial viability and growth in the future.

Omoruyi Edoigiawerie is the Founder and Lead Partner at Edoigiawerie & Company LP, a full-service law firm offering bespoke legal services with a focus on start-ups, established businesses, and upscale private clients in Nigeria. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. His firm can be reached by email at hello@uyilaw.com