New Zealanders are a nation of pie lovers, so it is no surprise that Georgie Pie evokes nostalgic feelings of simpler times and $1 pies. At its peak, Georgie Pie was selling more than 700,000 pies a week. Then, in 1996 McDonald’s bought the chain form Progressive Enterprises, and three years later, the Georgie Pie chain closed its doors.
Since then, fans have lamented its loss with campaigns similar to “Bring Back Buck” being launched. The "Bring Back Georgie Pie" Facebook page currently has more than 54,000 members. But while Georgie Pie may have abruptly closed its doors in 1999, the trade mark and intellectual property rights in the name live on.
In 2009, a "Bring Back Georgie Pie" campaigner was selling badges and t-shirts emblazoned with a Georgie Pie logo that had been modified to read “BRING BACK GEORGIE PIE”. After his campaign was publicised, he received a letter from McDonald’s lawyer highlighting McDonald’s trade mark rights and copyright in the brand, and requesting that the sale of the merchandise cease.
How can this be, when Georgie Pie closed 14 years ago? The answer is that a registered trade mark has the ability to live on in perpetuity, subject to renewal and continued use by its owner.
New Zealand legislation promotes the weeding out of unused, shelved brands, and the Trade Marks Act 2002 removed the ability to apply for a defensive trade mark (one that an owner could rely on, unused, to prevent others from applying for or using a similar trade marks). Now, if a trade mark has not been used, it can be removed from the register. Under section 66(1)(a) of the Trade Marks Act 2002, a registered trade mark may be revoked if a continuous period of three or more years has elapsed during which the mark was not put to genuine use in the course of trade in New Zealand.
Section 66(1A) introduced by the Trade Marks Amendment Act 2011 clarifies a “continuous period” as meaning a period that commences from a date after the actual date of registration and continues uninterrupted up to the date one month before the application for revocation. In other words, intermittent use of a trade mark from the date it was registered, and before the expiry of three years, can save it from revocation for non-use.
McDonald’s announcement on 9 May 2013 that the Georgie Pie would return in limited locations will preserve the trade mark rights in the brand and protect the mark from removal for non use for the next few years.. From June, the Georgie Pie trade mark will be used in trade on the Steak Mince ‘N’ Cheese pie, and will be available at two Auckland McDonald’s stores. At a later date this year, it will be available at four Waikato McDonald’s stores.
Similar limited use occurred in 2008 when a temporary Georgie Pie restaurant at a Christchurch bakery was established for one-day-only with fans flying form Manukau and driving from Invercargill to get their fix.
Is McDonald’s testing the market before a full scale revival of Georgie Pie? Is it researching the theory that “absence makes the heart grow fonder”? Or is it simply preserving its trade mark rights every three years?