Cachets and Catches

Wynne-Jones IP’s Victor Caddy looks at the pros and cons around renewing a piece of intellectual property when the time comes…

As designers and members of the licensing industry, you know that intellectual property doesn’t mean ‘clever houses’ – like a sinister next generation of smart homes, sentient as well as smart!

You know, too, that enforcing your rights doesn’t mean cutting back an overhanging branch or making sure next door’s new extension complies with planning permission.

One thing that isn’t often talked about, however – even in such learned circles as the licensing industry – is renewal. And no, I don’t mean a three-year paint job, or a new kitchen.

Trademarks are potentially immortal, but only if you keep paying renewal fees. In fact, UK trademark No. 1, which was registered in 1876, is still in force today. It’s a retro logo mark for Bass beer.

Even registered designs, which have a limited lifespan, need to be renewed regularly to keep them alive as long as possible. So, how should you decide whether to renew when the time comes?

Of course, the obvious commercial answer to this question is not to overthink it. If a particular trademark or design isn’t being used, cull it from your portfolio – and you can make your intellectual property budget go further in other areas.

But think about the trademark renewal situation for a minute… What if it’s a logo, and you’re still using the mark, but in a new logo form? A bit like Bass, actually. Do you need the old one or not?

“I’d wager a bet that the directors of Coca-Cola, Ford and Kellogg’s never sat around boardroom tables in the Seventies discussing how their archived work would be revitalised.”

Until recently, my advice would be to let unused marks lapse or – maybe, in the case of important ones – keep them alive for five years or so after you stop using them, until such time as no one is likely to try to emulate them and it frankly doesn’t matter if they do. However, there is a trend nowadays to tap into nostalgia. Nostalgia is a powerful force.

Sales of ‘new retro’ products can provide unexpected revenue streams for IP owners. But wait, didn’t the IP owner let that logo lapse years ago? And who is the IP owner these days, anyway? In fact, does the IP owner even exist today?

I’d wager a bet that the directors of Coca-Cola, Ford and Kellogg’s never sat around boardroom tables in the Seventies discussing how their archived work would be revitalised in decades to come.

What if you’ve let your retro rights expire and you want to licence someone to use those rights today? Well, you may still be in luck. Even if you allowed your retro rights to expire years ago, your designs may still have copyright. And, if your level of historic trading was big enough, you might still have residual goodwill, meaning that you potentially still have common law trademark rights. Both copyright and common law trademark rights can be pegs on which to hang licences.

Potentially more problematic is the situation if you want to use a retro design or logo that was owned by someone else ‘back in the day’. Here too, you might still be in luck, but you need to trade carefully… It should be easy enough to find out who the original IP owner was, but it may be quite another matter to establish who – if anyone – now owns the rights.

In the case of retro designs and logos, there may have been many transfers of the IP over the years, none of which is on the public record. That means there may be a current owner who is difficult or impossible to identify. This brings in an element of unpredictability and uncertainty.

Yes, retro intellectual property can have commercial cachet. But it can also have catches. If a current IP owner can’t be found, it’s almost impossible to say for sure that you can use them safely. In law, proving a negative is one of the most difficult things to do.

My take-home message is the same as ever. You need to know what you’re doing. It’s vital that you seek expert advice to help you. After all, would you buy a listed house without knowing what you’re getting into? No, of course not. Not even if it was a ‘clever’ one.

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