The US Federal Appeals Court rejected an argument that "Google" had become so popular that it was synonymous with the word "search" and should lose its protected status.
Google's trade mark was attacked on the ground that it was a "generic term universally used to describe the act of internet searching". While it may be common to "google it" or "just ask google", the Court was not convinced. There was insufficient evidence that the general public viewed Google as a generic name for carrying out an internet search, rather than as the brand of the search engine.
In New Zealand, the registration of generic marks is prevented by section 18(1)(d) of the Trade Marks Act 2002. If, however, the mark is already registered, the mark is susceptible to revocation under section 66(1)(c) if it has become generic.
Genericism only needs the mark to have become "a common name in general public use", it does not have to be 'the name', but it will require cogent and objective evidence that the mark has become a common name for the product or service in respect of which it is registered and is used by the relevant market of consumers to denote a particular type or kind of product. Until then, the mark will not be considered generic.
The company warned investors more than a decade ago that there was "a risk that the word 'Google' could become so commonly used that it becomes synonymous with the word 'search'."