Gone but not forgotten: the importance of protecting unused trademarks

  • Law
  • May 20, 2013
  • Rachel Dawson
Gone but not forgotten: the importance of protecting unused trademarks
3news.co.nz

As of last week McDonald’s re-launched the iconic pie brand Georgie Pie and it is intending to roll the brand out to other locations depending on their popularity.

The trouble McDonald's faced was that although the Georgie Pie trademark and various logos were registered in New Zealand and Australia in 1976 when the first stores opened, the registrations began expiring and many were not renewed following the sale of the franchise to McDonalds in the mid-1990s. The end result was the trademark registrations that remained were vulnerable to revocation if they hadn’t been used in the past three years. 

As the owner of the New Zealand trademark registrations, McDonald's has been active in defending its rights over the years, including stopping the sale of ‘Bring Back Georgie Pie’ t-shirts in Wellington, and preventing the opening of a ‘GP Pies’ store by a company called George Pie Limited. McDonald's has also periodically filed fresh applications for registration in order to maintain active rights in its brands, in case its old registrations were invalidated for non-use.

Australian ownership and rights in the brand are much less clear, as the mark there is registered  by ‘Georgie Pie Family Restaurants Pty Ltd’ in relation to pies, and more than one business seems to be using the name. Interestingly, there is a Georgie Pie café in Brunswick, Australia, which one reviewer commented “caught my eye and gave me fond memories of the chain restaurants of the same name, but not related”. 

The owner of the trademark registration has the right to stop this café using its registered trademark in relation to pies, but it does not own exclusive rights in relation to the sale of pies or the operation of a café under the name Georgie Pie. They would therefore have to show that consumers would be deceived or confused by the café’s use of the name Georgie Pie. From the comment above, this might be difficult to prove.

The recent Georgie Pie example, which is by no means unique, just goes to show that a trademark registration can be a powerful tool, but it is essential to get expert advice as getting it wrong can be as dangerous as not registering your mark at all.

Mello Yello is another example of how trademarks can be tricky. The soft drink was hugely popular in the 1980s, but was phased out in the 1990s. Coca Cola registered the trademark in relation to non-alcoholic beverages in 1978, and subsequently obtained a new registration in in 2006 when the brand was relaunched.

Coca-Cola’s registration was vulnerable to revocation when the mark was not in use. However, because the registration was limited to non-alcoholic beverages, it was also vulnerable to another company obtaining trademark registrations for the extremely similar Mellow Yellow brand in relation to confectionery and snack food.

Brands are a powerful tool, which can evoke nostalgic memories from consumers for many years. It is therefore essential to review your rights and ensure you still have the exclusive right to use your brand (or similar mark) in relation to your current product offering or possible future offerings. Failure to do so may lead to others launching a new business under your brand.

Registration of a trademark ensures your ownership of a brand. If you don’t own a trademark, your only defense against competitors using it is consumer protection legislation such as the Fair Trading Act, which requires proof that your reputation in a mark is such that consumers would think anyone else’s use of that mark was connected to you.

That said, Deka closed more than a decade ago, and if someone opened a store called Deka I’d think it was connected to the original company. But could you trust a judge to be so untrendy? Far better to register your mark and avoid the guesswork.

  • Rachel Dawson is a senior solicitor at the James & Wells Christchurch office, specialising in trademarks and copyright. 

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