Retro: registering 'lost' brands

Retro has made a comeback in recent years. Brands which used to be all the rage but then disappeared from the market are now getting a new lease of life. One well-known example is Mini cars, while Quick (sports) clothing is also experiencing a revival.

Reintroducing such names and benefiting from the goodwill often still associated with the brand is an attractive proposition for companies. But is it allowed? The European Court of Justice (ECJ) has ruled on this issue in a case concerning former French car manufacturer Simca.

Simca
Cars manufacturered by Simca, which became the property of PSA Peugeot Citroën, disappeared from showrooms in the early 1980s.

In 2007 an application was filed for the trademark SIMCA in the European Union on behalf of a party which was not related to PSA. The mark was subsequently registered in 2008.

PSA launched proceedings to revoke the registration, which it claimed was registered in bad faith.

In its judgment the ECJ considered whether the registration of the SIMCA mark was indeed made in bad faith. The relevant issues here were the origin of the brand, its previous use and the commercial logic of the new registration. Further, it was relevant to consider whether the applicant was aware of the brand's past.

Benefitting from history
The ECJ recognised that the SIMCA brand was still familiar, despite the fact that Simca cars had not been sold for some years. The documents also show that the applicant was aware of Simca's reputation and history. This was why he had registered it. By registering the mark, the applicant apparently wanted to benefit in a "parasitical way" from the residual familiarity and history of the brand. According to the ECJ, this was the only commercial logic behind the registration.

The ECJ held that together, the facts showed that the registration had been made in bad faith and should therefore be revoked.

Comment
Reintroducing a supposedly lost brand can lead to objections from the rights holder, even when the trademark has not been used for some time. It is therefore advisable to conduct thorough research into the legal position of a trademark before investing in a ‘new’ retro mark.