Danger of successful trademarks becoming 'generic'.

Byline: By Mark Evans

Brands can be valuable. Big names such as Google and Apple are frequently valued by industry analysts at billions of dollars.

Despite this, a recent survey has indicated that perhaps as many as 80% of British businesses fail to protect their brands and other intellectual property rights.

Without its brand, a business such as Amazon.co.uk is reduced to little more than a warehouse; eBay and Google would be reduced to little more than buildings full of computers running proprietary software. Registering trademarks is a key weapon in the arsenal of those fighting to protect their brands. Some marks will be too descriptive to be registrable, others may not be distinguishing enough and some descriptive marks will be registrable only if it can be shown that significant goodwill has been built up in the brand, such as Newcastle Brown Ale.

Registering a trademark by itself won't guarantee you protection forever, even if you pay the renewal fees on time.

Registered trademarks can be struck off the register where they are not used, and, more worryingly for business, if they have become so much a part of everyday language that they have become "generic" terms for that type of product ( in other words, if it becomes too successful and the trademark owner has lost control over how the brand is used.

Anyone who has ordered a Daiquiri or a Pi-a Colada in a cocktail bar probably won't have realised that those names were once registered trade marks for alcoholic drinks.With the word "Google" now taking its place in the Oxford English Dictionary, and the verb "to google" now entering the Mirriam-Webster's Collegiate Dictionary in the US, we can perhaps understand that Google Inc. is worried that it might lose the protection afforded by its trademark registrations around the world ( so much so that it felt the need to write to numerous newspapers and media websites with guidance on how the word "Google" can be used. It hopes that this action will mean that Google joins the ranks of Coca-Cola, Kleenex and Hoover, all well known brands that still benefit from trade mark protection, rather than joining the ranks of generic former trade marks such as spandex, aspirin and tarmac.

Next time you're talking about a search using the search giant's website, Google is happy for you to say "I ran a Google search to check out that guy from the party", phrases such as "I googled that hottie" are strictly off limits.

Mark Evans is a solicitor in the intellectual property and technology group at Watson Burton LLP. He can be contacted on (0191) 244- 4219 or at [e-mail].