Can you enforce rights in an orphan brand?
A recent judgment of Recorder Amanda Michaels in the IP Enterprise Court (IPEC) illustrates some of the challenges that can arise when an old brand falls into disuse and is not enforced against third party infringers for many years. The case is Prysmian Cables & Systems Ltd v M/S Apple International & Ors.
In this case, the old brand was BICC Components (BICC originally stood for British Insulated Callender’s Cables). It used a so-called "hamburger logo" (pictured) up to the late 1990s.
In 1999, the cable business was sold and it was subsequently acquired by Pirelli Cavi E Sistemi SpA, and rebranded as BICON. In other words, the claimant in this case had never actually traded under the BICC name.
However, when the defendants started to sell cable components in the UK in 2017 under the BICC Components brand (including the hamburger-style logo pictured), Pirelli’s trade mark attorneys asked them to remove all references from their website and marketing materials.
The defendants did not do that. Instead, the second defendant (an individual) later applied to register a UK trade mark for the BICC Components logo.
After further letters were exchanged, the claimant brought proceedings alleging passing off (based on goodwill in the BICC Components name) and infringement of the BICON trade mark. It also sought invalidation of the second defendant’s trade mark registration.
Spoiler alert: The judge found in favour of the defendants on all points.
The passing off claim essentially failed because the judge found the claimant had “deliberately abandoned the goodwill” in the mark in 2000/2001 and made no subsequent use of it:
“It seems to me that this is a case in which, assuming that Pirelli/the Claimant obtained ownership (not just a short term licence) of the goodwill in the BICC name for the UK, it never intended to use it. It swiftly adopted the new BICON name and registered it as a trade mark.”
If that finding was wrong, she then considered whether the goodwill originally associated with the BICC name was lost by attrition over the 16-17 year period before the defendants’ activities. She concluded that although BICC retained some level of reputation in the UK even in 2017, this was not the same as goodwill:
“I am satisfied that the parties to this dispute consider that there is an advantage in referring back to the BICC name and heritage … But if the Claimant has never claimed the right to use that name, but has expressly disavowed such a right in the course of promoting its BICON products, it seems to me that it cannot be said that the Claimant has any goodwill in BICC. The alternative is that the Claimant can claim goodwill in a mark which it has not used, because of a reputation built up many years ago by its predecessors in business. I am not persuaded that such a solution can be right, and I conclude again that the Claimant does not have goodwill in BICC.”
However, she added that if she was wrong about the goodwill finding, then there was (or was likely to be) misrepresentation and damage.
Trade mark infringement
The claimants argued that there was trade mark infringement under both sub-sections 10(2) and 10(3) of the Trade Marks Act.
However, the judge found that there were more differences than similarities between the signs, and overall they were dissimilar. Taking into account all the circumstances, she found there was no likelihood of confusion under 10(2):
“In my judgment, none of the evidence indicated that there was any confusion between the BICON mark and the sign. Nor was there any evidence before me to prove that BICC Components was or would be associated with the Claimant’s range of products under the sign BICON which would fall into any of the usual L.A. Sugar categories of indirect confusion.”
Turning to 10(3), she found there would be no “link” made between the signs as the defendants’ sign would not bring the BICON mark to mind for the average consumer. Even if there had been a link, she found there was no unfair advantage or detriment.
Based on these findings, the attack on the validity of the second defendant’s trade mark registration failed. A further argument that he acted in bad faith because he knew BICC was associated with the claimant was also rejected. The judge accepted the second defendant's evidence that he intended to rekindle and restore the mark, which he referred to as “an unwanted child”:
“In my judgment, no honest trader knowing that the BICC mark had not been used for around 18 years, especially one knowing of the Claimant's letters disclaiming any rights in the name, and/or its failure to claim any such right in its initial letter of complaint to the Third Defendant in 2016, would have thought it inconsistent with honest practices to apply for the BICC Components mark.”
Ressurrecting an old trade mark is hard
Resurrecting old marks can be a powerful marketing tool: just look at the success of the iconic MG car brand, now owned by Chinese company SAIC and used on electric vehicles.
But this case provides several lessons for anyone seeking to enforce an historic brand: above all, make sure that the chain of title is clear and well documented so that you can prove ownership of goodwill in the historic mark. Without that, you may not be able to stop other people who have an affinity with the brand from adopting it and benefitting from its prestige.