Is Shazam’s trade mark in danger of becoming generic?

In an interview with Marketing Week, Shazam’s vice-president of marketing and communications, MaryLou Costa, was asked what she thought of people saying they are “Shazaming” or have “Shazamed” something.

“Any marketer has to be careful about positioning their brand,” she replied. “But I think it’s a good thing when people reference Shazam in that way. I want fans to know they can use Shazam for many things and if they want to say they are Shazaming something, then that’s positive.”

But encouraging consumers to use a trade mark as a verb may not be viewed quite as positively by IP lawyers – or by trade mark registries.

“Are there legal ramifications?” says Helen Wakerley of Reddie & Grose. “There certainly are. Look at escalator and lino – which used to be trade marks. Laws that enable people to get a generic name removed [from trade mark registries] are there.”

The threat of becoming generic means that Hoover fights hard to stop users – and rivals – from referring to vacuum cleaners as hoovers. The maker of Portakabins does the same for temporary buildings and Rolls Royce does for luxury cars.

But while Wakerley says that she advises her clients not to allow their trade marks to be used as anything other than adjectives, she says there may be a difference between using a mark as a noun and a verb.

“There’s a question here about the way that technology has changed our language: does saying “to google” or “to shazam” really bastardise the trade mark or is it ok? I’m not aware of a mark being challenged on the grounds that it has become generic through use as a verb. It may be that those old cases might not apply if someone talks about using a specific product for a specific action.”

A court in the US might get to put that theory to the test when it considers an attempt by a man in Arizona to have Google’s trade mark cancelled on the grounds that “it is, or has become, a generic term universally used to describe the action of internet searching with any search engine”.

David Elliot filed his case with the court on May 21 after Google won a ruling forcing him to hand over more than 700 websites with names including “googledonaldtrump.com”.

The Californian company has been aware of the potential threat to its mark for many years. It began sending letters to news outlets as early as 2005, urging them not to use its trade mark as a verb.

At the time, Rose Hagan, then head of Google’s legal team, told Managing IP that “genericisation is a concern and something we have to face”.

And Wakerley agrees that the real test of a company’s relaxed approach to the use of its mark is how it would respond if a rival used it as a verb.

“The question for Shazam’s brand attorney is ‘how would you feel if a competitor did it?’ They would probably sue. Encouraging the public ''to shazam'' is a risky strategy.”