Given this background, when I hear the word \u201cSkyline\u201d the first thing I think of is definitely not the Ford Motor Company. And yet, oddly enough, Ford has recently applied to register \u201cSkyline\u201d in relation to \u201cmotor land vehicles, namely SUVs, trucks and automobiles\u201d in the United States (3).<\/p>\n
While Ford hasn\u2019t used the name \u201cSkyline\u201d before, it has used \u201cSkyliner\u201d to indicate a level of trim on a number of its models in the 1950s. Nissan continues to use \u201cSkyline\u201d in Japan, but sells the same car in the US as an Infiniti Q50. The model which gave the \u201cSkyline\u201d name legendary status, the GT-R, is no longer sold under \u201cSkyline\u201d in any jurisdiction.<\/p>\n
In a possible retaliatory move, Nissan filed for \u201cSkyline\u201d in the US relation to \u201cmodel cars; minicars\u201d claiming first use on 8 January 2021. The U.S. filing includes an example photo of a four-door R34 Skyline model, indicating that Nissan intends to use \u201cSkyline\u201d as a legacy brand . Nissan has also registered the name for full-sized cars in Canada on 25 August. While the model car filing doesn\u2019t necessarily trump Ford\u2019s application, it does indicate that Nissan is fighting to keep the rights to the \u201cSkyline\u201d name in the US \u2013 and might even oppose Ford\u2019s application should it be accepted.<\/p>\n
Ford itself is no stranger to trade mark appropriation. It has been reported (5) that Ford had wanted to use the GT-40 mark for its 2002 reboot of the legendary Le Mans winning model only to find that someone else had registered it. That someone was Safir Automotive, a company which had been building replica GT-40s since 1981 and had secured the rights to distinguish its cars (and later replacement parts for original GT-40s) from other replicas.<\/p>\n
According to Automotive News (6) Safir sought USD$40 million from Ford in return for a license, which would have added another $9,900 to the production cost of each of the 4,038 Ford GTs built. Ford reverted to the GT name instead of returning to the negotiating table.<\/p>\n
So what are the IP lessons here? In most countries trade mark rights can be secured by being the first to use a mark on or in relation to goods or services. If no-one has used the mark then the rights can be secured by the first person to apply to register. However most countries also employ a use it or lose it policy \u2013 which means that registrations which have not been used for a certain period of time can be revoked to keep the Register clear of \u201cghost\u201d registrations.<\/p>\n
In Nissan and Ford\u2019s case it appears that rights were never secured. This left each of them vulnerable to another party using or registering the mark. Safir was able to maintain its GT-40 registration because Ford had let it establish a legitimate business selling replica cars, and subsequently car parts, under the GT-40 trade mark. Since Ford was not using the mark itself there was no conflict of rights and Ford was not able to challenge the registration.<\/p>\n
In Nissan\u2019s case, it appears to have made a conscious decision not to use the Skyline trade mark on cars in the US, leaving it vulnerable to Ford\u2019s application. While Nissan has belatedly attempted to secure some trade mark rights, these are unlikely to have any effect on the validity of Ford\u2019s application. Nissan may however be able to challenge the application if Ford\u2019s use of \u201cSkyline\u201d will cause confusion in the market in light of Nissan\u2019s residual reputation \u2013 assuming there are a sufficient number of Nissan Skyline loving car enthusiasts in the US.<\/p>\n
Owners of valuable trade mark rights need to take a two pronged approach to protection which involves:<\/p>\n
\u2022 Maintaining trade mark registrations for valuable brands; and
\n\u2022 Ensuring that those brands are genuinely used on the relevant goods or services.<\/p>\n
For automotive brands use can be difficult \u2013 although JLR\u2019s classic continuation programme (7) shows that it can be done successfully (and lucratively with the right automotive bloodstock).<\/p>\n
Trade mark owners should also consider implementing policies to monitor and discourage unauthorised third party use of their marks. Had Ford intervened in Safir\u2019s use of GT-40 at an early stage it almost certainly wouldn\u2019t have encountered the same difficulties with its GT reboot.<\/p>\n
As for Nissan, it\u2019s not clear whether it will use this development as a prompt to review and protect other valuable brands which may have fallen into disuse. It is clear to me that if Nissan does decide to do so, the \u201cNissan Homy Extra Long\u201d, \u201cNissan Cedric\u201d, \u201cNissan Gloria\u201d, and \u201cNissan Sileighty\u201d will not likely be at the top of its list of brands to protect. While undoubtedly effective at the time, like my late 1980\u2019s mullet, the seductive clarity of hindsight shows them to be less than fashionable.<\/p>\n
As a much younger man the first quality car that I bought was a Japanese import Nissan Skyline GTS-T with 80,000kms on the clock. Unlike my previous vehicles, it had a stereo that worked (and gave justice to the music I was listening to at the time) (1), electric windows, and air conditioning. It also…<\/p>\n","protected":false},"author":8,"featured_media":3083,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":""},"categories":[258],"class_list":["post-3283","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-trade-marks-intl","insight-resource-articles-intl"],"acf":[],"yoast_head":"\n