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Use it or lose it! How an iconic-but-forgotten brand was resurrected in America

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Published Date: August 29, 2017

How a savvy entrepreneur resurrected America’s “original cream-filled chocolate cookie”

As far as podcasts go, NPR’s Planet Money is right up there with the best! Which is why we were doubly delighted to hear an updated episode regarding the resurrection of the Hydrox chocolate cookie which had a strong focus on the nature of trade mark rights.

This episode speaks generally about trade mark rights in the conversational, non-legal manner that we endorse at IPLive. An excerpt from the synopsis of the episode follows below:

“A trademark is a funny kind of property. It’s different from a patent, it’s different from owning the rights to a song. A trademark can be a single word, a slogan, a logo. It isn’t owning the business, it’s owning the things that make the business distinct and recognizable, what sets it apart. Trademarks serves two purposes: To prevent confusion for consumers, and to discourage knock-offs. You can think of it as a relationship between a company and its customers. It’s a signal that tells people buying a product: We made this, and it’s legit.”

Planet Money tells the tale of a man who tries to “build a nostalgia-fueled empire of iconic-but-forgotten brands”, but the catch is that the famous Hydrox trade mark was still nestled in the bosom of a consumer goods giant. It’s a wonderful story and one that I would describe as David v Goliath crossed with Searching for Sugarman!

This genius tactic is something that is possible in South African law too: Adams & Adams’ Jameel Hamid describes the effect of the analogous laws in South Africa here:

“Section 27(1)(b) of the Act provides that any ‘interested person’ may apply to have a trade mark registration cancelled on the ground that there was no bona fide (good faith) use of the trade mark for a continuous period of five years or more, from the date of issue of the registration certificate.”

Effectively, the rule “use it or lose it” applies to trade mark rights: if you don’t make use of your trade mark it is vulnerable to cancellation on the basis that you have not used the mark. We acknowledge that five years is a little bit longer than Warren Whiteley is allowed to keep the ball at his feet at the back of a scrum, but in essence, it’s the same principle!

The episode has a happy ending: Hydrox, the “original cream-filled chocolate cookie” is now sold in over 4,000 stores in the United States and the episode ends with a glowing endorsement from America’s most famous investor/business magnate who I will keep as a surprise for you and simply refer to as “Warren”. Wait, that’s a bit too obvious so I’ll just call him Mr Buffett!

By Nic Rosslee

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