Jandals - trademarked name or generic term?

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The uproar over a Hamilton retailer using the term 'jandal' to sell flip flops highlights the blurred line between a trademarked name and a generic term, an intellectual property expert says.

Online retailer Lastseason.co.nz was last week served with a letter asking the Hamilton-based company to stop using the term 'jandal' to advertise footwear on their website as they were in breach of a trademark.

The retailer argued that 'jandals' is a generic term for everybody to use and that raises questions about whether the trademark can be enforced, James & Wells Intellectual property lawyer Gus Hazel said.

"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," Hazel said.

Sandford Industries Ltd, which brought the jandal trademark in 1995, recently sent the cease and desist letter to Lastseason.co.nz.

The term 'jandals' is said to be a derivative of Japanese sandals. Morris Yock, who is alleged to be the inventor of the shoe, filed to protect the word in 1957, and it was registered as a trademark on January 4, 1963.

Hazel said this case resembles his own firm's court action challenging the term 'Batts' which is owned by Tasman Insulation New Zealand, contending that it is part of everyday Kiwi language - used to describe home insulation.

The High Court has reserved judgment on this case and a decision is expected in coming months.

"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," Hazel said.

Trademarks that have been revoked from registers around the world for becoming too generic include pain relief medication 'aspirin', insulated food containers 'thermos', and escalator.

Even trademarks such as Hoover and Google could be in danger of being revoked for genericism, as they are commonly used to describe an action in everyday language, Hazel claims.

Lastseason.co.nz director Chris Atkins said the feedback they had received about the stoush was resoundingly positive.

"Everyone is saying it's a New Zealand word for New Zealanders to use and that it is ridiculous that someone is making money off it," he told Fairfax.

Atkins said the site was now running a "Not Jandals" deal, offering two pairs of flip-flops for $9.99, and still had about 7000 pairs to move.