8 June 2020
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Have you ever fondly remembered a brand from your youth and wished you could get your hands on those products you loved once more?

For some companies, the power of nostalgia and our love of all things retro presents an opportunity. By relaunching an abandoned brand with a fresh, updated look, they can benefit from a pool of consumers who remember the original and may be favourably disposed towards the new products. It can save considerable time and expense on marketing if they don’t need to build a reputation from the ground up.

However, before embarking on such a venture, it is important to be prepared to navigate the pitfalls along the way.

Can any existing rights be purchased?

One of the first things a third party planning to resurrect a brand may consider is whether there are any existing rights in the brand which could be purchased.

If the original brand owner’s business still exists, it might be possible to acquire the whole business. Whilst this is something which will require very careful consideration, it could provide the new owner with, not just tangible assets, but also valuable business know-how.

Even if it isn’t desirable to purchase the whole business, purchasing certain intellectual property rights, such as trade mark registrations and any relevant domain names, is likely to be an attractive option, potentially providing the new brand owner with rights which date back many years.

Of course, it may not always be entirely straightforward working out who the owner of any existing IP rights is and tracking them down. Many trade mark owners do not promptly record changes of address or company name at the Trade Mark Offices, particularly once they start to lose interest in a brand. 

Furthermore, in the UK, if a company has been dissolved without transferring ownership of its trade mark registrations first, they will have become the property of the Crown. However, this doesn’t mean there are no options available. In such circumstances, it may still be possible to purchase the rights through the Bona Vacantia division.

Make sure you don’t get bitten!

One scenario in which very serious problems can arise is where the original brand owner still retains an interest in the brand, or sees the success of the relaunch and decides they want a piece of the action.

In the UK, trade mark registrations can be maintained even if the mark is no longer in use. Therefore, if the original brand owner has not abandoned their UK trade mark registration, re-launching the products without consent may result in a trade mark infringement claim. If use of the trade mark ceased more than five years ago, the registration may be vulnerable to non-use cancellation, and therefore unenforceable in reality. However, if the trade mark owner can demonstrate at least some use during the last five years, they may be able to maintain and enforce their registration.  

Even where any existing trade mark registration seems vulnerable to cancellation for non-use, or where any previous trade mark registrations have been abandoned, it is possible the original brand owner retains some unregistered trade mark rights in the form of goodwill, particularly since in most cases the brand will have been chosen for a revival because of its popularity the first time round. In the UK, the goodwill acquired through use of a trade mark overtime, which can be protected and enforced under the law of passing off, can continue to exist for a period after the use of the mark has stopped. Such residual goodwill, if it exists, could also form the basis of a challenge to use and registration of the mark.

Other unregistered rights such as copyright and unregistered design rights could also be problematic.  

Should the dead stay dead?  

Providing you conduct your due diligence, and proceed cautiously, there is no need to fear the zombie trade mark.

Thorough research should be conducted to ensure the original brand owner has truly abandoned their mark. This could also uncover potential assets relating to the brand which it might be possible to purchase.

Of course, any rights being acquired from the original brand owner should be examined carefully, with their validity and enforceability being considered as far as possible. It is also worthwhile taking some time to look at the history of the rights. For example, trade mark registrations which date back several decades may have changed ownership before, perhaps multiple times. Ensure that all assignments have been correctly recorded, or there are at least clear and thorough records of the chain of ownership, to enable you to record the most recent assignment. Evidence of the transfer of goodwill is also very important.

Trade mark searches can be valuable tools, helping you to get an understanding of any conflicting trade mark rights which might be problematic for the relaunch of the brand. If the original trade mark owner didn’t actively enforce their rights in recent years, it is possible that third parties have acquired their own trade mark rights in the meantime which could pose obstacles to use and registration by the new owner. If these potential issues are identified in good time before the brand is re-launched, there will be time to consider if steps can be taken to mitigate the risks.

The new brand owner may also be interested in entering new markets the previous owner never considered, for example by expanding the range of products offered, or by selling into new countries. It would be sensible to develop a strategy for this at an early stage, so that appropriate steps can be taken, such as conducting additional trade mark searches or filing new trade mark applications.

Rebecca is a Partner and Chartered Trade Mark Attorney at Mewburn Ellis. She handles all aspects of trade mark work, with a particular focus on managing large trade mark portfolios, devising international filing and enforcement strategies, and negotiating settlements in trade mark disputes. Rebecca has extensive experience of trade mark opposition, revocation and invalidity proceedings before the UK Intellectual Property Office (UKIPO), including very complex evidence based cases. Rebecca also has a strong track record in overcoming objections raised to trade mark applications.

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