A well-known brand is crucial for marketing purposes and it is therefore natural to try and take advantage of the reputation of a brand that has not been used for some time.
Registered trademarks control. Cases of reuse of a trademark that has been disused for a long time
The General Court of the EU has recently provided an interpretation to a frequent phenomenon, i.e. the request for registration of trademarks that are still known, but have not been used for a long time by the owner of the intellectual property.
Verification of NEHERA, trademark requested for a variety of products including leather goods, clothing, shoes
Lawyers dealing with trademark registration and control are familiar with the sentence of the EU court that rejected the declared nullity as issued by the EUIPO against a re-registered trademark in 2013. In 2019, the heirs of Jan Nehera, an entrepreneur who was very active in the 1900s, filed an application for opposition and invalidity of the trademark to th EUIPO, complaining that the new filing had been requested in bad faith. The applicants’ grandfather, Jan Nehera, had set up in Czechoslovakia in the early 1930s a clothing and accessories business bearing the trademark “Nehera”, filed with a national trademark identical to the disputed trademark.
The rejection by the EU Court of the EUIPO nullity due to lack of bad faith of the registrant
The EUIPO ruled in favour of the appellants and declared the new NEHERA trademark null and void, but the appeal to the EU Court by the new trademark owners confirmed the defense and existence of the new trademark.
The EU Court excluded the bad faith necessary to declare the invalidity of a trademark. Bad faith underlies the purpose to damage the interests of third parties and obtain a right that does not comply with the functions of the trademark. Furthermore, in order for bad faith to exist, it is necessary to consider the degree of notoriety of the trademark at the time of the application for registration, for the average target consumers. The Court found that whoever claims the invalidity of a trademark must demonstrate that the bad faith of the person applying for registration of the new trademark at the time of the application, in order to:
- exploit the reputation of the old brand;
- take unfair advantage of its reputation.
The Court then assessed the elements of the case, and analyzed:
- the historical context;
- the legal protection granted to the earlier trademark;
- its notoriety;
- the appellant’s knowledge of its existence and reputation.
The existence of bad faith in cases of reuse of a well-known trademark
In the 1930-40s Mr. Nehera had used his well-known trademark for his products, but starting from the 1950s the trademark had become extinct due to non-renewal. Furthermore, the existence and notoriety of the Nehera trademark were known by those who re-requested it subsequently.
In 2013 the old Nehera brand was forgotten. The new holders devoted time and money to revive the earlier trademark, share the history of its former owner, restore the brand’s reputation as well as the historical image of Mr. Jan Nehera.
Such a conduct cannot envisage bad faith of the registrant during the filing phase, and the new trademark cannot therefore be canceled.
The decision adds up to those of other cases whereby a disused historical brand has been long-after revived by subjects other than the original owner. Such cases have been dealt with by various national courts, confirming the exclusion of bad faith in the reuse of the trademark that is no longer used and redeposited by third parties after a long time.
Cases of reuse of well-known brands in Italy
Italy witnessed the recent case of “Lambretta”, a notorious trademark, no longer used nor renewed from the 1980s, and later re-deposited by third parties unrelated to its previous owner.
This case too raised questions about the legitimacy of the operation of brand appropriation. A ruling of the Court of Cassation, however, reaffirmed the conditions for forfeiture and stated the notion of non-use of the trademark.
When it is possible to reuse a non-renewed brand
A trademark expires after five years of non-use, even when it does not lose its distinctive capacity. After a certain time, in fact, consumers can still remember the old expired trademark which can also be registered by third parties who have never had anything to do with the original company, former owner of the well-known trademark.
Other cases in Italy were those of Isotta Fraschini, a car manufacturer whose trademark was redeployed fifty years after the cessation of the car production activity, and Schiaparelli, redeployed in the early 2000s, sixty years after the cessation.
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