Jandals – Trademarked name or generic term?

Jandals – Trademarked name or generic term?

In the wake of a Hamilton online retailer being ordered to cease and desist selling ‘jandals’, an intellectual property expert says the line between trademarked names and generic terms is often blurred.

Baron Sandford of Sandford Industries Ltd recently sent a cease and desist letter to the Hamilton-based online discount apparel store Lastseason.co.nz to demand they stop selling the popular style of footwear by using the term ‘jandals’.

Intellectual Property lawyer Gus Hazel says the retailer argues that ‘jandals’ is a generic term for everybody to use which raises questions about whether the trademark can be enforced.

“Trademarks act as a badge of origin. They are rights that can be registered in things like brand names, logos and even colours, to inform consumers of the source of goods or services and therefore what sort of quality of they can expect from them,” Mr Hazel says.

Mr Hazel has researched the history of the jandals trademark. ‘Jandals’ is said to be a derivative of Japanese sandals. Morris Yock (alleged to be the inventor of the shoe) filed to protect the word in 1957, and it was registered as a trademark on 4 January 1963. The trademark was on sold to several other companies before being bought by Sandford Industries Ltd in 1995. The register shows that the Trademark is registered for ‘footwear and all types of hosiery’ and ‘articles of clothing’.

“So the question is, could Sandford enforce its rights in the trademark when many say the word jandals is generic?”

“In reality,” says Mr Hazel, “Trademarked names can become genericised. The purpose of a trademark is to be distinctive of a supplier, not descriptive of the goods. Therefore, trademarks are one area of law where a registered rights owner can be a victim of its own success. Once a word becomes ‘a common name in general public use for a product or service in respect of which it is registered’ – that is, generic – it can in fact be revoked from the trademarks register in New Zealand.”

Mr Hazel cites examples of trademarks that have been revoked from registers around the world for becoming generic including aspirin, thermos, yo-yo and escalator. Trademarks such as Hoover and Google have been said to be in danger of being revoked for genericism, as they are commonly used to describe an action in every day language (i.e. you could Google someone hoovering).

While James and Wells is not representing any party in the jandals case, the firm recently acted for Knauf Insulation in the first case before a court on this question under the Trade Marks Act 2002. Among other issues, Knauf challenged the trade mark Batts which is owned by Tasman Insulation New Zealand, contending that it is part of everyday Kiwi language. The High Court has reserved judgment on this case and a decision is expected in early 2014.

Mr Hazel says businesses concerned that they might receive a letter like the one about jandals or any other trademark, or those that think someone is misusing their trademark should seek specialised legal advice from an intellectual property lawyer.

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