There has been a lot of talk about the antithetical women’s swimsuits this summer.
The decision of some French mayors to ban women wearing a bathing outfit that covers a large part of their body stirred up a hullabaloo and was followed by a worldwide controversy which divided political movements and consciences in a clash of ideologies and cultures.
This is obviously not the place for getting into a discussion on this level or for expressing opinions, which, being personal, would be of no interest to anyone.
We will thus limit ourselves to addressing the issue in a more lighthearted manner, from the perspective of trademark consultants, and note that the media brought into the spotlight a word that until yesterday was virtually unknown to the public at large: “burkini”
It is odd that this word should gain popularity on the French Riviera, where only a few decades ago – today it seems like centuries! – another word mentioning a scandalous item became popular: “bikini”.
But what are these two words, from a lexicological and legal viewpoint?
The history of the word “bikini” is fairly well known.
In the remote atoll of Bikini, in the Marshall Islands, the United States conducted nuclear experiments between 1946 and 1958. In the early summer of 1946, a French tailor designed a revolutionary bathing suit, made up of two separate pieces, which revealed an unprecedented – for the time and place – amount of the female body. He guessed that such a garment would be socially explosive, like an atomic bomb. That’s why he called it “bikini”.
We may note, for the sake of history, that Monsieur Réard was not mistaken in expecting an uproar, because the scandal for having dared so much was enormous and the garment was banned by many authorities. It took many years and a few “scandalous” photos of BB (Brigitte Bardot) on the French Riviera before the bikini was sanctioned and allowed on beaches around the world.
What about the Burkini?
Let’s say right away that although it is written with this spelling in our media, the word was actually coined in the phonetically identical version of “Burqini”, a trademark that Aheda Zanetti, an Australian designer of Lebanese origin, used and registered in Australia and in many countries abroad, including the European Union, for “clothing, footwear, headgear including swimwear, hooded swimwear, …”.
The creator of the trademark uses it to designate a suit made of synthetic material which covers most of the body, almost always including the head; she designed and produces it to give women who, because of culture, obligation or choice, do not want to or cannot uncover their bodies, a possibility of swimming and bathing in water more comfortably than they would with complete dress.
The trademark consists in a sort of blend between the words burqa (or burka) and bikini. It has an undoubtedly evocative effect, though in reality it suggests more the idea of a burqua than the actual function, as it does not include a face covering.
Therefore, both of the words we are talking about are names that a manufacturer gave to their product.
That is to say, they are “trademarks”, intangible property belonging to those who created/registered them and on the basis of which the owners can prevent others from using them.
Or rather, in the case of bikini, it used to be a trademark, but is so no longer. What happened?
The laws of practically every country substantially enshrine the same principle as set forth by Italian law in Article 13 of the Industrial Property Code : “A trademark is revoked if, as a consequence of any actions or of the inactivity of its holder, it has become in the trade the common name of a product or service or if it has lost its distinctive character”.
This is the phenomenon known as “genericization” of a trademark; it occurs when a trademark is no longer perceived by the public as indicating a specific source of the product or service associated with it, but is rather considered a generic indication of the product or service itself.
For example, what do a biro, formica, cellophane, linoleum, a walkman and a hola hoop have in common? Nothing, of course, apart from the fact that they were once trademarks but have since lost this status and become common words that anyone can use. And indeed we do use them habitually, as do even the competitors of the original owners of these names. If we were to analyze them grammatically, we could say, paradoxically, that they have been transformed from proper nouns into common names of things.
Or at least they have become common names in some countries or jurisdictions, though perhaps not in others, because we must always remember that trademark rights have territorial validity and the phenomenon of genericization may thus occur in one country and not in another for an infinite number of reasons.
Probably the most famous case of a trademark that has become generic in some jurisdictions but not in others is “Aspirin”, which can be used by any manufacturer of acetylsalicylic acid in the USA, but only by Bayer in Italy. And, just to show how there may be infinite reasons for a different status in different countries, it is worth pointing out that the lapse of the Aspirin patent and trademark was among the reparations imposed on Germany by the victors of World War I with the Treaty of Versailles in 1919.
A famous judgment handed down by the Italian Supreme Court of Cassation in 1978 in relationship to the cellophane trademark recognized that genericization “is a highly complex phenomenon which is tied to … the mysterious laws to which we owe, precisely, the formation of language“.
Paradoxically, therefore, the more successful a trademark is, the more it risks losing its exclusiveness, precisely because of its success.
So is there nothing trademark owners can do to avoid losing this highly important company asset?
Of course there is! It won’t have escaped notice that the text of the Italian law says that a trademark is revoked due to the actions or inactivity of its holder and this principle is analogous to the one expressed in the majority of trademark laws, including the EU Trademark Regulation.
That is why it is always necessary to combat every attempt – on the part, obviously, of competitors, but also of distributors, advertisers, the media and dictionaries – to use a trademark as a generic terms.
Placing a ® or another sign indicating that the name is a trademark every time it is used on a product or in communication is the first essential step to take.
In addition to this, strict instructions should be given to the whole sales and advertising chain never to use the trademark as a noun, but only as an adjective of the generic name of the product, and never to create verbs or compound nouns or plural forms or other linguistic neologisms.
Continuous monitoring should also be undertaken on an international level in order to rapidly detect and counter any third party act that may lead to a loss in the distinctiveness of one’s own trademark.
If and when, despite all the precautions taken, dictionaries include, rightly from their point of view, the trademark among the words of the national language, the holder can still ask that alongside the new term an indication be given that it is a trademark.
Among the famous cases of words that have been introduced into Italian dictionaries but are valid trademarks for all legal purposes, precisely thanks to the actions of their holders, we may mention Autogrill®, Nutella® or Alcantara®, all strictly accompanied by ®!
Therefore, going back to the beginning of our discussion, we should probably formulate the title of these few observations in a more ‘legally’ correct manner by changing it to ‘Bikini o Burqini ®?’.
Another question might arise: will Burqini® manage to keeps its ®?
© BUGNION S.p.A. – September 2016