Brand Genericity

By: Carlos Enrique Castillo García, partner and director

With the entry into force of the new Intellectual Property Law of El Salvador (February 17, 2025), the Salvadoran Institute of Intellectual Property (ISPI) was created, which, among other powers, was assigned the power to know and decide on the cancellation due to generalization (genericity) of previously registered trademarks.

Thus, Article 145 of the aforementioned Law establishes under the condition that, if the name of a brand, due to its widespread use in the market, becomes the generic name of one or more of the products or services for which it has been registered, the cancellation of the registration or inscription may be requested, or its scope may be limited.

This provision clarifies that a trademark will be considered to have become a generic name for the product or service it covers when, in commercial circles and for the public, said trademark has lost its distinctive character as an indication of the business origin of the product or service to which it applies. That is, the trademark—a word mark—as a distinctive sign, is used in the local commercial or market as the name that identifies the category to which it has been applied. In this way, said trademark becomes the name used in usual or common commercial transactions to distinguish the product or service it has identified; thus losing its exclusive identity, or its distinctive character, and consequently, losing its legal protection.

Any interested party may request the cancellation of a trademark, and the Institute (ISPI), through its superior authority, will declare the cancellation by means of a reasoned resolution. For this purpose, the following conditions must be met with respect to the trademark: a) The absence of another suitable name to designate the product or service to which the trademark applies in commerce. b) The widespread use of the trademark as a common or generic name for the respective product or service by the public and in commercial media. And, c) The public's lack of recognition of the trademark as a distinctive sign of a specific business origin.

When a brand achieves significant market recognition without a clear positioning strategy, consumers begin to use it as a synonym for the product or service itself, rather than as a brand that identifies it, until the brand becomes the generic term for the product or service.

The generic nature of the brand prevents a clear distinction between similar products, and in such a condition, its cancellation is warranted because it no longer fulfills its commercial purpose, since, as a common name, it does not allow the product or service that it identified to be popularly known by any other name than that of the brand.