The LYCRA® Louts

Photo Credit: www.chrismaher.co.uk

In the wake of Team GB's dominant display in the Olympic and Paralympic cycling, it was only a matter of time until the Lycra Louts emerged once more. Post-Olympics, it will be impossible to avoid them.

Hot on the heels of the Paralympics closing ceremony, our first high profile Lycra Lout is spotted: Dominic Casciani, writing for the BBC News website.

His offense is clear from the headline of the article: "Rise of the Mamils (middle-aged men in lycra)". Though perhaps innocuous to the untrained eye, a quick glance at any good dictionary will identify the problem:

LYCRA® Lout ∙ /ˈlaɪkrə laʊt/ n 1. A person, unaware of the fact that LYCRA® is a jealously guarded trade mark, who uses the word LYCRA® generically

Identifying Lycra Louts is more than mere pedantry. For Invista, the company which owns the rights to the LYCRA® trade mark, it is big business. They have clear advice on their website explaining that LYCRA® fiber is very different from generic stretch fabrics and that, accordingly, the terms must not be used interchangeably. To quote from the advice, "Please don't say: "Men in LYCRA®.""

As strange as the situation may seem, there is an important legal basis to it. When Invista say that misuse of the trade mark is "a disservice to the person who values the performance of LYCRA® fiber over generic stretch materials", this does not tell the whole story.

The fear for Invista is that the LYCRA® trade mark will, through misuse, become a generic term. If lycra has become "the common name in the trade" for generic stretch fabrics, the trade mark will be liable for revocation on the grounds that it no longer satisfies the requirement of distinctiveness, under s. 46(1)(c) of the Trade Marks Act 1994. This has been the fate of many former trade marks, such as 'hoover', 'thermos' or 'walkman'.

The question to ask is whether this point has already been reached. The wording of the act provides assistance in judging the issue. It is necessary, according to s. 46(1)(c), for the mark to have become generic "in consequence of acts or inactivity of the proprietor". This is, presumably, what Invista seek to avoid through the advice on their website.

In previous cases, dictionary definitions have provided assistance in judging whether a mark has become generic. For this reason, Article 10 of Community Trade Mark Regulation 209/2007 provides for the correction of dictionary entries to indicate that a mark is registered and not a generic term. Performing this exercise with lycra makes worrying reading for Invista. A search on Google.co.uk for "lycra definition" provides a dictionary definition devoid of any mention of a registered trade mark.

Outside of dictionaries, the mainstream news seems to treat lycra in a similar, generic fashion. A recent story in The Daily Mail, despite using 'Lycra' with a capital 'L', is almost certainly using the term generically. Petronella Wyatt, a definite Lycra Lout, writes: "On August 16, my mother was hit by a Lycra lout". Leaving aside the fact that Ms Wyatt's dictionary seems to have led her astray, it is clear that she is referring to lycra in sense of the generic stretch fabric worn by cyclists, rather than to identify the brand of fiber incorporated into the offending cyclist's garments.

Similarly, a Google News search for 'lycra' provides a slew of results presumably making generic use of the term. This article about Victoria Pendleton's upcoming 'Strictly Come Dancing' appearance, for example, employs the term lycra to refer to in a generic fashion to cycling apparel, with no specificity about brand or fiber content.

The loss of a mark's distinctiveness is a problem faced by numerous companies - often those owning the rights to high profile trade marks. By their nature, these may be the terms with which familiarity is the highest and, as a corollary of this, which are in danger of becoming the common name in the trade for a product.

To conclude the case study of lycra, it seems that the burgeoning popularity of British cycling, with its 'lycra clad' protagonists, has pushed the mark into generic territory. Invista may claim that their campaign to protect the trade mark precludes the mark becoming generic in light of the wording of s.46(1)(c). Their struggle is King Canute-esque, however, against the reality of a world where our cycling heroes speed through the national consciousness wearing their generic lycra.