From the character who, as sleepwalker without will, appeared in “I Walked with a Zombie” -the classic horror film directed in 1943 by Jacques Torneur- to the characters of “The Walking Dead”, the use of zombies is constant in the genre of terror. With more or less blood, viscera, meat and other similar decorative elements, movies, literature and even videogames have made of zombies characters to the height of demons, vampires, ghosts and other similar entities that inhabit the universe of our fears.
Even trademarks have zombies: brands that were notorious at a given time and which use has been discontinued over time but still retain a residual goodwill. Think of brands that accompanied us in our childhood, which for simple reasons of commercial survival disappeared at a given time but that remain alive in our memory, and hence continue to perform their distinctive function, identifying a certain business origin.
Recently Spanish courts have faced a zombie trademark case: the "FAMOBIL" brand (the result of the combination of FAMOSA and PLAYMOBIL) was used by Famosa -a Spanish toy manufacturer- to identify the so-called Clicks dolls in Spain, until it was abandoned in favor of "PLAYMOBIL" brand. Later, the trademark "FAMOBIL" was again registered as a brand by a third party, to identify dolls similar to the aforementioned Clicks. The registration was declared null by the Regional High Court (Audiencia Provincial) of Alicante in a decision dated January 10, 2014. In said decision the court considered that the registration had been based on an improper use of the notoriety of the pre-existing "PLAYMOBIL" brands .
The question here is, can the owner of the unused brand prevent expiration due to lack of the use, because of the goodwill that remains associated with the sign? And, moreover, as we have seen in the example, can a third party register the abandoned mark again to use it by taking advantage of the goodwill that this signs still retains?
The issue is quite relevant (incidentally, there are also business models created in the exploitation of these brands, such as Dormitus.com), and resurges from time to time in one place or another. Hence, for example, a very similar case has recently been brought before the Italian courts in connection with an action to declare expiry due to lack of use of three Italian brands LAMBRETTA (the famous brand of mopeds).
The case, as reported by Julia Holden and Giulia De Bosio (Trevisan & Cuonzo), can be summarized as follows: since 1971 "LAMBRETTA" mopeds are no longer produced in Italy. The then-proprietor (Innocenti) sells its company to Scooter India Ltd. that moves the production to India, from where they are still exporting to Italy until the year 1985.
In 2008, a Dutch company (Brandconcern BV) filed a suit to obtain the expiration due to non-use of the Italian trademarks LAMBRETTA, registered in the years 1948, 1968 and 1969. Scooter India objected on the grounds arguing that the mark had been reused in 2002 and -as far as we interested- also because the brand had maintained its reputation and this would prevent its expiry to be declared for lack of use.
The case finally reached the Italian Supreme Court, which on March 28 of this year has issued a sentence in which it rejects that maintaining the reputation of the sign serves to hinder its expiry to lack of use. According to the Court, the loss of distinctive character or reputation is not a requirement for lapse due to non-use, which is precisely what it seeks not to extend the monopoly of a sign that is not used and which, for that reason, when the sign is declared expired due to lack of use is free to be used by anyone.
This last statement regarding the freedom to register the expired sign by anyone who wishes may give rise to some reflections. Because there will be cases in which with the new registration can give a risk of error in the recipients, who will unfailingly associate to the expired sign. But it is also true that the same risk is present in other situations, and trademark regulations do not always prevent it. Perhaps it is that such risks should be avoided from other perspectives (for example, unfair competition), or perhaps it is that (as in the two examples of audiovisual works belonging to this genre that we put at the beginning) not all Zombies are equal and that the solution depends on the circumstances that concur in each case.