A dispute looms on the horizon: Ford brands SKYLINE in the United States

As a much younger man, the first quality car I bought was a Japanese-imported Nissan Skyline GTS-T with 80,000 km on the clock. Unlike my previous vehicles, it had a working stereo (and did justice to the music I was listening to at the time) (1), power windows, and air conditioning. There was also a brutal turbo lag which caused the rear wheels to break traction about 3 seconds after they smashed the throttle into the ground. I liked it! When I sold it to a colleague (2), I had accumulated an additional 100,000 km of spirited driving.

Given this background, when I hear the word “Skyline” the first thing I think of is definitely not the Ford Motor Company. And yet, oddly enough, Ford recently filed for registration of “Skyline” in connection with “land motor vehicles, namely SUVs, trucks and automobiles” in the United States (3).

While Ford has not used the name “Skyline” before, it used “Skyliner” to indicate a trim level on a number of its models in the 1950s. Nissan continues to use “Skyline” in Japan, but sells the same car in the US as an Infiniti Q50. The model that gave the name “Skyline” legendary status, the GT-R, is no longer sold as “Skyline” in any jurisdiction.

In a possible retaliatory measure, Nissan has filed a “Skyline” claim in the US regarding “model cars; minivans “claiming first use on January 8, 2021. The US record includes a sample photo of a four-door R34 Skyline model, indicating that Nissan intends to use” Skyline “as the legacy brand. Nissan has also registered the name of full-size cars in Canada on August 25. While the car model filing does not necessarily override Ford’s claim, this indicates that Nissan is fighting to retain the rights to the “Skyline” name in the United States – and could even oppose Ford’s request if it is accepted.

Ford itself is no stranger to brand ownership. It has been reported (5) that Ford wanted to use the GT-40 brand for its 2002 reboot of the legendary Le Mans-winning model only to find someone else had it saved. That person was Safir Automotive, a company that had been building GT-40 replicas since 1981 and had obtained the rights to distinguish their cars (and later original GT-40 spare parts) from other replicas.

According to Automotive News (6), Safir asked Ford for 40 million US dollars in exchange for a license, which would have added an additional $ 9,900 to the production cost of each of the 4,038 Ford GTs built. Ford returned to GT’s name instead of returning to the negotiating table.

So what are the lessons of intellectual property here? In most countries, trademark rights can be secured by being the first to use a trademark on or in connection with products or services. If no one has used the mark, the rights can be secured by the first person to apply for registration. However, most countries also have a use or loss policy – meaning that records that have not been used for a certain period of time can be revoked to prevent the registry from containing “shadow” records.

In the case of Nissan and Ford, it seems that the rights were never guaranteed. This made each of them vulnerable to use or registration of the mark by another party. Safir was able to keep his GT-40 registration because Ford had allowed him to establish a legitimate business selling replica cars, and subsequently auto parts, under the GT-40 brand. Since Ford was not using the mark itself, there was no conflict of rights and Ford was not in a position to challenge the registration.

In Nissan’s case, it appears to have made the conscious decision not to use the Skyline brand on cars in the United States, leaving it vulnerable to Ford’s enforcement. Although Nissan belatedly attempted to secure certain trademark rights, they are unlikely to have any effect on the validity of Ford’s claim. Nissan may, however, be able to challenge the claim if Ford’s use of “Skyline” causes confusion in the market in light of Nissan’s residual reputation – assuming there are a sufficient number of enthusiasts. cars lovers of Nissan Skyline in the United States.

Holders of valuable trademark rights should take a two-pronged approach to protection that involves:

• Maintain trademark registrations for valuable brands; and • Ensure that these marks are actually used on the goods or services concerned.

For automotive brands, use can be difficult – although JLR’s classic continuation program (7) shows it can be done successfully (and profitably with the right supply of automotive blood).

Brand owners should also consider implementing policies to monitor and discourage unauthorized use of their brands by third parties. Had Ford stepped in early on in Safir’s use of the GT-40, he certainly wouldn’t have encountered the same difficulties with his GT restart.

As for Nissan, it’s unclear whether it will use this development as an incentive to review and protect other valuable brands that may have fallen into disuse. It’s clear to me that if Nissan decides to do this, the “Nissan Homy Extra Long”, “Nissan Cedric”, “Nissan Gloria” and “Nissan Sileighty” are unlikely to be at the top of its list of brands to protect. While they were undoubtedly effective at the time, like my late 1980s mullet, the alluring clarity of hindsight shows that they are far from trendy.

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