In the Tik-Tok age, a brand may skyrocket in value, simmer down, and be phased out, before the trade mark has obtained registration, in countries like South Africa. For those short-term “flash in the pan” brands, should one still file trade marks? And on a related point, should one continue using “phased out” brands, and bother with their renewal. Usually, YES, here’s why:
- Brands are never really here today, gone tomorrow. Even when brands don’t end up being used long term, there is residual equity and goodwill connected to the business, and often, one’s broader brand identity. Sharp brand owners wouldn’t give competitors a ticket to dilute their IP by swooping in on those existing rights and value. Practically, brands may be seasonal, and therefore make a comeback a few years later.
- Clever portfolios still use the “phased-out” brands. For the reasons made above, whether for brands which are earmarked for later readoption, or often even for those once-off brands (as one never knows), clever brand owners continue using phased out brands. Therefore, brand owners can use subtle advertising motifs from prior brands, “limited edition” campaigns, with merchandise that harkens back to our nostalgia, or simply place “phased out” brands covertly on the product packaging. It is striking and impressive when clever brand management and marketing brilliance go hand-in-hand! So, it is more important to renew one’s existing trade marks, than is often appreciated.
A trade mark application confers important rights. Even if not registered, a trade mark application itself confers many rights, which acts as a roadblock to third parties who may attempt to register and use the trade mark rights. And if third parties do not do their due diligence, and any third parties adopt a brand which has a trade mark application in place by the brand owner, and the brand owner as trade mark applicant needs to defend their rights, such an application lends support in such proceedings, and so even prior to registration, is far better than relying on common law rights alone.
Therefore, whether or not a brand is intended to be used in the long term, or is a brand is simply intended as a once-off campaign, managing all of those possible trade mark rights are increasingly important, not only ensuring that proper trade mark protection is in place, but then also actively using the brand after it is out of season, which can and is often achieved by smart brand owners in subtle ways, which can also lend itself to marketing brilliance. This is because older brands often do lend itself to a lot of goodwill. Notably, customers often build a cult following around phased out brands, so ceding that value is a blunder, and competitors will try to use those brands that aren’t actively managed. So - file, use, and renew as a rule of thumb.
KISCH IP can assist with the identification, protection, maintenance and enforcement of trade mark rights, ensuring that valuable brands remain protected throughout their lifecycle.
