April 25, 2024
How to stop your automotive trade mark crashing and burning
How to stop your automotive trade mark crashing and burning

Cars serve multiple purposes to different people. To some they are the workhorse for their daily commute, to others a car may be the focal point of the school-run and after school activity. Cars can also serve a purpose as a collector’s item or a past time.   

No matter what the role or purpose, there still will be connection, memory and nostalgia held by the public towards their cars and this translates into the goodwill held towards each brand and model. However, there appears to be a disjoin between being able to preserve the recollection of car manufacturers’ former offerings, where the trade mark may not necessarily still be in direct use by the proprietor.

Car manufacturers want to obtain trade mark registrations to stop others from using them and causing brand confusion in the automotive market. Trade mark offices can however revoke your trade mark if they believe you have not used it. So, what can or should car brands do to ensure they maintain their trade mark portfolio?

The recent TESTAROSSA decision is a case in point, as it highlights this key consideration for automotive brand owners and enthusiasts alike.


How can we protect registered trade marks from cancellation action whilst also preserving the nostalgia that cars of old have with relevant sectors of the general public?

There are two main reasons why a trade mark registration may be revoked.

Firstly, where there is no genuine use of the mark by its proprietor for a continuous period of five years and no proper reasons for the non-use.

Secondly, where as a result of the owner’s actions or their inactivity, the mark is now a common name in the trade for the products or service for which it was registered.

The cancelled TESTAROSSA mark fell foul of the first of these two reasons and this particular cause of non-use cancellation would be more at issue for automotive brands than the other.


What is the future?

In order to ensure other car manufacturers do not receive the same fate, more will need to be done to ensure that continuous use is made of a trade mark, if owners intend for it to remain enforceable. Being directly involved in the second-hand market for example could potentially be one way to demonstrate the required use element of a mark. Furthermore, exploiting the rights to a trade mark through licensing is another way to ensure marks can attain continuous use via brand extension.

Another way to ensure continuous use of a mark in current models is through life-cycle impulse or facelifting, prolonging the longevity of those models throughout the trade mark registration period.

The most interesting, or most contentious concept, depending on your outlook on the situation; is the thought (or audacity) of an automaker to reinvent an old classic for the modern world.

Car manufacturers, in their defence, now face the very real issue of needing to use their trade marks or lose them to revocation actions. If they do then reinvent their products of old, this can sometimes have the effect of tarnishing the value of cars of old that have gained cult hero status.

An early example was the BEETLE by Volkswagen. Volkswagen sought protection for its BEETLE trade mark in the late 1990s ahead of the resurgence of the “new” Beetle in 1998. One example of the trade mark filing and the goods covered can be found here.  They looked to capitalise on the popularity of the first iteration that was sold between 1950 and 1979.

The newer car sold initially between its launch in 1998 and 2011 and then again in 2012 up until its discontinuation in 2019.

However, fear not fans of this compact classic. We can see that a 2020 trade mark registration in Germany for DE302020015369 “e-Beetle” in classes 12, 35 and 37 could well mean we may see an electric-powered version of the classic car in years to come.

We are of the opinion that a zero-emissions take on the Volkswagen Beetle would not be such a bad idea and feel this would be embraced well in the car community.

One such instance that has not gone down so well is the use of the MUSTANG branding by Ford for its Mach-E. The Mach-E proudly bears the prancing horse, previously reserved for brutish two door 5.0 litre muscle cars. But as seen in the TESTAROSSA case, if you don’t use it, you’ll lose it. Brand owners in the car industry have to move with the times. With the potential of a looming ban on the sale of petrol and diesel cars, there is seen to be no time for sentiment. If certain trade marks are to survive, they need to be reborn – in this case as a mid-sized family SUV of the future.

The conundrum for the automotive industry remains; how can we use our trade mark in a way that shows ongoing use of the mark and allows our fans to remember their cherished vehicles without losing the built up reputation of the original and, of course, not alienating the fanbase.

Today we see the relaunch of the Renault 5 for the first time since 1996, widely reinforcing its rights to the iconic “5” logo mark with a number of trade mark applications filed this year and international protection sought for the words.

With the very recent launch of the Frontera and also the likelihood of the resurgence of MANTA as a model vehicle; Opel (or Vauxhall to our UK audience) may be reverting to the 80s and 90s to provide some automotive nostalgia to entice fans.

And what does this mean for TESTAROSSA? Well, their recent trademark loss may have just spurred them into action, we may well see a new supercar in the guise of the FERRARI 500 TESTAROSSA for which the trade mark extensions of protection were filed at WIPO earlier this year. Yes, please Ferrari!

Trademarks /  Automotive /  Disputes

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