Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
What are the pros and cons of breathing new life into seemingly abandoned third party brands?
The main advantage for a person adopting the abandoned trade mark of a deceased trading entity is the instant recognition already inherent in the brand, particularly where the mark has previously enjoyed a reputation.
Some argue that it should not be allowed because the entity adopting the trade mark is gaining an unfair commercial advantage over those already in the market who have achieved entry into the market with their own hard work and effort. However, the whole point of reviving the abandoned trade mark is to utilise such an advantage. There is also the issue that, if the new trade mark owner has no economic connection with the original brand owner, the purpose of the trade mark for denoting the origin of the goods or services is undermined. Perhaps more so if the goods or services are identical or similar to those for which the brand was originally recognised. Hence the name “zombie”, as the mark is apparently still active, but all is perhaps not as it seems.
Others argue that recognisable brands which are not being used constitute a wasted opportunity. Perhaps the best scenario is if the original brand owner is trying to revive the trade mark having been “forced” to let it go by pressures in the market. However, even if the brand is being revived by an independent third party there is the argument that if the mark had been very important it should not have been simply abandoned in the first place.
In assessing whether or not to try and revive an abandoned trade mark the interested party must take care that the original owner is not likely to object to its use on grounds of passing off and bad faith. This should be avoided by a careful and extensive due diligence exercise, involving trade mark and common law searches. Obtaining the “consent” of the original brand owner should also be carefully considered, as seeking such “consent” could be sufficient to rebut any argument of bad faith in acquiring and reviving the brand. Also, seeking to enter the market with the collaboration of the original owner will assist in ensuring that the quality of the products or services is maintained and will also assist in preventing any perception that the mark is misleading to consumers or likely to cause confusion.
In conclusion, careful consideration needs to be given to the adoption of a seemingly abandoned brand and there is no substitution for a due diligence exercise. If you need advice on reviving an abandoned trade mark call us on 0161 827 9400 or email firstname.lastname@example.org.