Opportunistic Rivals Can't Adopt Re-Branded Trade Marks
With multiple brands renaming, opportunistic traders may be tempted to adopt the name of a disused Trade Mark. But the result for the opportunistic trader may not be pleasant.
The re-naming of products such as confectionery lines Red Skins and Chico lollies does not mean those well-known brand names can now be exploited by rival manufacturers.
Nestle has unveiled the new names of its Allen’s Red Skins and Chico lollies, which have been re-branded after claims they have racist undertones. The lollies will now be known as Red Ripper and Cheekies.
But the abandoned brand names are not automatically available for use by rival manufacturers wanting to exploit a well-known brand name.
The abandoned names are now known as Ghost marks, which have a legal reputation but are unused. Think of Astro-Boy.
It is a requirement of trade mark law that a trade mark applicant must legitimately claim to be an owner of the trade mark. When a trader merely adopts the trade mark of another, it will not ordinarily meet that requirement. The result is an invalid trade mark.
The issue has been before the courts before and the Court basically said, if the mark is legally abandoned you can adopt it. But mere non-use does not mean it is legally abandoned. Re-badging may not be abandonment either.
Multiple brands have re-badged their products amid Cancel Culture claims of racist stereotyping and other gender or racist undertones.
Nestle is the latest brand to re-name its products in line with the recent Black Lives Matter movement, following an announcement from Mars Foods that it would be reviewing its Uncle Ben’s brand.
US food giant PepsiCo has also vowed to scrap its Aunt Jemima brand, due to its origins in racist imagery of black people.
In Australia there’s been pressure to change the name of Coon cheese and recently the makers of Eskimo Pie ice creams announced a name change.
Rival manufacturers who may consider adopting the old brand names, to push their own products and exploit the brand’s market profile should think again. They should always conduct trade mark clearance to use searches to identify risks of adopting certain marks.
It is doubtful the trade mark holders would, at this juncture, have abandoned the original trade marks.
There are also legal issues here of misleading and deceptive conduct and passing off. You can’t simply adopt an unused trade mark to try to trade off the old reputation.