05/13/2013 05:25 pm ET Updated Jul 13, 2013

When Brand Power Backfires

Do you only Google on Google? Avoiding the slippery slope leading to the death of a super brand.

For many of us, Google is seen as the fountain of all knowledge. If we need to find out anything at all, most of us "Google it." But when we say "Google" are we referring to the real deal, or another search engine such as Bing, Yahoo or Ask Jeeves?

Recently, the Swedish Language Council, a regulatory body responsible for the advancement and cultivation of Swedish language added the word "ungoogleable" (translated from the Swedish "ogooglebar") to its annual list of newly recognized Swedish words. This was defined as something "that cannot be found on the Web using a search engine." It didn't take long for Google to spot this, who wrote a letter to the Council asking that the definition be changed to refer specifically to the Google search engine and asking that a disclaimer be included stating that Google is a registered trade mark.

In response, the Council expressed its "displeasure with Google's attempt to control the language" in a press release and deleted the word altogether, not wanting to get into a complex legal battle with the brand. Inevitably, Google will be portrayed as a corporate giant pushing around small businesses with good intentions for no reason, but this sort of bad publicity seems a little unfair, as Google do have a legitimate aim to pursue.

Generic Trade Marks

Google, like a number of other historic famous brands, is quickly becoming the victim of its own success. Many people now refer to Google when they do not actually mean Google -- it is a word which is increasingly being used to refer generically to any and all Internet search engines.

There are a number of day-to-day words which many of us do not realize originated from powerful and distinctive brands. "Catseye" was once a registered trade mark as was "Escalator," "Thermos" and "Aspirin," to name some of the better known examples. Over time, these brand names came to be associated generally with the goods to which they related, with fatal consequences for each of them.

When this happens, it is ultimately the death of the brand and the huge sums of money spent on marketing and years spent building up the brand reputation are lost. Hoover is classic example of a brand who's success ultimately lead to its demise, as so many of us now say we're "hoovering" when we're using a Dyson (whoops, looks like Dyson might be going the same way...). Google is a dangerously long way down this slippery slope.

UK legislation prescribes that a trade mark is liable to be revoked (and indeed cannot be registered in the first place) where the mark consists exclusively of signs or indications which have become customary in the current language or in the trade. When you think about the purpose of trade mark law and remember the essential function of a trade mark (which is to indicate the origin of the goods and services offered) this legislation makes sense. If a mark has become generic and is used generally in the language or the trade, and not specifically to refer to the trade mark owner's goods or services, it cannot identify a particular entity and so cannot fulfil its fundamental purpose.

However, the law provides that the situation must result from the registered proprietor's own acts or failure to prevent others from referring to the mark generically. Of course, there comes a point where a brand will be fighting a losing battle, and regardless of its efforts, the trade mark will lose its ability to distinguish the brand from others and the brand name will become worthless. This is why Google is going to the lengths of writing to what we might think of as an obscure language society in Sweden -- to protect and maintain its very valuable trade mark and to ensure it has a future.

Brand Owners, Take Note

All brand owners should take note and take active steps to ensure that the same doesn't happen to their trade mark. And it is not just about taking action against third parties from referring to their brand in the wrong way; brand owners themselves are often guilty of referring to their name generically.

Brand owners can take a number of simple steps to prevent their marks from becoming generic, some of which are listed below:

• Make good use of the ® symbol where the name has been registered as a trade mark and the TM symbol where it has not.
• When referring to the mark in writing, always distinguish it from other words in the text -- for example, by always capitalizing the mark or using a different font. At the very least, the first letter of the brand name should be capitalized.
• Use the mark in combination with the generic term for the product it relates to -- for example, Google could refer to the "Google search engine."

And remember that it may also be important to retain documentary evidence which shows the preventative measures and active steps taken.

These are measures that Google no doubt employs and will have done for many years. But the Google name is now so widely used that it is at risk of becoming generic and losing all its brand power. For that reason, even at the risk of some bad publicity, Google must take even stronger measures to prevent the brand's descent down the slippery slope into the pool of generic names.