AL: News

Zombie trade marks: a refleshing update

Wednesday 31 October 2018

As Halloween falls upon us, zombies are all around. The common-or-garden Halloween-style zombie, according to the Oxford English dictionary, is a “corpse said to be revived by witchcraft”[1] . However, “zombie trade marks” are also out there, eager to be awakened in the dead of the night.

Zombie trade marks take shape in many spooky forms. They are the abandoned, historic brands: the trade marks of businesses which are no longer actively trading. To the untrained eye, they can appear lifeless, but look a little closer, and there may still be a soul lurking behind the eyes.

Despite their vacant, ragged appearance, zombie trade marks can be an attractive choice. The lingering essence of valuable brand equity can mean that some grave diggers may look to take advantage of these buried marks, and by reviving the old corpse. However, if that apparently lifeless and ownerless cadaver turns out to be a zombie trade mark, it can still bite.

The key issues to consider, for third parties thinking about resuscitating an ‘old’ mark, include:

  • are any ‘old’ marks still registered?
  • is the owner of any ‘old’ trade marks still a living company?
  • do any unregistered rights remain?

Checking the status of the trade marks and the owner can be reasonably straightforward, although significant issues can arise if an owner has either dissolved or assigned the registered trade marks, without recording the transaction. However, the third issue is often the trickiest.

Firstly, there may be copyright and sometimes unregistered design rights that remain in relation to logos. At least in the UK, there’s no central register to identify copyright or unregistered designs. Further, there may be “residual goodwill” (see below) in a brand, which might be enforceable under the law of “passing off”.

A brand’s goodwill is its power of attraction, built up through trade. However, even when production of goods and services ceases, residual goodwill can remain[2], which the owner may be able to enforce against revivers of zombie marks. Goodwill can only truly “die” if it “is deliberately abandoned in circumstances which are inconsistent with it ever being recommenced”[3]. There have been many legal decisions on where the line between residual, enforceable goodwill and dead, unenforceable goodwill lies, but ultimately it comes down to the circumstances. If the original brand owner:

  • still uses the mark in some way; or
  • clearly intended to re-start use (for example it was forced to stop trading but still has the impetus to re-start),

then residual, enforceable goodwill could subsist. In these tricky circumstances, we would not recommend going zombie-hunting alone.

If you have any queries or need advice in relation to the resurrection of zombie marks, feel free to speak to any of our trade mark attorneys.

Happy Halloween!

 

[1] The Little Oxford dictionary, Sixth edition (Oxford: Clarendon Press,1986), p.661.
[2] Maslyukov v Diageo Distilling Limited and another [2010] EWHC 443 (Ch)
[3] Christopher Wadlow, The Law of Passing-Off: Unfair Competition by Misrepresentation (London: Sweet & Maxwell, 2010), p.243.

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