The primary significance test is used to determine the distinctiveness of a term. The basic consideration of this test is the main idea (or primary significance) that a term conveys in the mind of the consuming public. If the consuming public perceives the term as referring to the general class of products or services that it intends to represent as a mark, then the term is generic. ² But if the consuming public associates the term with the product of a specific producer or the service of a specific provider, then the term is distinctive. ³

Philippine law expressly adopts the primary significance test in determining whether a registered mark may be cancelled for losing its distinctiveness and becoming generic due to a shift in public perception. ⁴

Indeed, the primary significance of a term, based on public perception, may change over time. Consequently, a distinctive mark may later become a generic term. For example, in the United States, the mark “ASPIRIN” originally referred to the acetylsalicylic acid drug of Bayer Co. ⁵ However, based on how the general consuming public used the mark in time, it lost distinctiveness and became the common name for the drug itself. Therefore, the mark became generic and could no longer be subject to protection from the time that it became part of the public domain.

Conversely, a generic term may later become a distinctive mark. This also happened to some marks in the U.S. In 1896, “SINGER” was considered a generic mark for a type of sewing machine. ⁶ However, more than half a century later, “SINGER” was considered a distinctive, and thus registrable, mark. ⁷ Similarly, “BOOKING” and “.COM” were initially considered generic terms. ⁸ Later, however, survey evidence showed that the public ceased to perceive “BOOKING.COM” as referring to a genus, because it had associated the term with the booking services available at that domain name. Therefore, the term became registrable, because it had begun to describe the hotel reservation services of a specific provider.

The Philippine Supreme Court used the primary significance test (in conjunction with the doctrine of secondary meaning) in determining whether a generic term has become a distinctive mark in the mind of the consuming public.

Under the doctrine of secondary meaning, a descriptive term may be used exclusively as a mark, if -- through the long and exclusive use of that descriptive term by a specific manufacturer in referring to its product -- the descriptive term comes to mean that the product was produced by that manufacturer. ⁹ Using the primary significance test, the Philippine Supreme Court ruled that the term “GINEBRA” (which means “gin” in Spanish) has become descriptive (and ceased to be generic), because the consuming public perceives the term as characterizing the gin product of a specific gin manufacturer. And this descriptive term can be registered to and used exclusively by that gin manufacturer under the doctrine of secondary meaning, because “GINEBRA” is no longer associated with gin in general, but is currently associated with the gin product of that specific gin manufacturer through its long and exclusive use. ¹⁰

The primary significance of a term to consumers can be established through direct or indirect evidence. ¹¹ Purchaser testimony and consumer surveys are considered direct evidence of such, while listings, dictionaries, newspapers, and other publications are considered indirect evidence of such. ¹² In the U.S., direct evidence of the consuming public’s understanding of a term are preferred in proving genericness. 13 Consumer surveys, in particular, have become almost required in litigations involving genericness. While indirect evidence (such as dictionary definitions) may be considered, they are not determinative of how a term is understood by the consuming public. ¹⁴

In sum, the distinctiveness of a term is determined by how the consuming public understands such term. If the consuming public associates the term with the general class of a product or service, then the term is generic. But if the consuming public associates the term with a specific product manufacturer or service provider, then the term is distinctive. The current public perception of a term is best proved by purchaser testimonies, consumer surveys, and other forms of direct evidence. Such direct evidence are especially useful in showing that a descriptive term has acquired a secondary meaning among the consuming public; consequently, the descriptive term can be registered to and used exclusively by a specific manufacturer or provider, to whom the consuming public currently associates that descriptive term.

If you want to read more on fanciful, arbitrary, suggestive, descriptive, and generic marks, please see this article: “The Spectrum of Distinctiveness for Mark Protection: A Guide to Choosing the Right Trademark or Service Mark in the Philippines.”

Please Note:
This article was prepared for informational purposes only. It is not a legal advice. And while it strives to be accurate and relevant, there is no guarantee that it will remain so in the future or when it is received. For legal advice on Philippine intellectual property (IP) law, please consult a licensed Philippine attorney.

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