EU legal action on LAMBRETTA trademark | NEWS
Those of you who love Lambretta scooters and read SLUK will be well aware of preparations by Lambretta Consortium (now referred to as Innocenti SA on Lambretta.com) to release new Lambretta-branded scooters this year.
The Lambretta Consortium, as they were previously named, are backed by Dutch Trademark firm Brandconcern.
The Consortium’s plan is to have vehicles available to test at the EuroLambretta event in Adria in June 2017. You can read our predictions for the Lambretta Vendetta here.
However, a recent court ruling shows that Brandconcern’s rights to use the name are still a matter of ongoing legal wrangling with Scooters India Limited.
How do you own a brand?
The traditional way to own a brand is to either build it yourself, or to buy it from the rightful owners.
This is what John Bloor did when he purchased the defunct Meriden-based Triumph Motorcycles name in the 1980s, before using it to start a completely new Triumph business based in Hinckley.
The same applied when the Indian government bought Innocenti’s Lambretta production line and set up Scooters India Limited (SIL) in the 1970s.
Scooters India Limited subsequently produced Lambretta scooters (based on the Grand Prix/dl and Cento) from the mid-1970s until the late 1990s.
However, there’s more to brand ownership than that. Ownership of the trademark is not given automatically, and only applies to jurisdictions and ‘classes of use’ where you have made an application.
Additionally, if a brand has been demonstrably ‘out of use’ for a substantial period or in a particular ‘Class of Use’, then effectively the brand can be ‘back up for grabs’.
‘Classes of Use’ must be individually applied for. For instance Sony might own the class covering electrical goods, but they may not have registered ‘Sony’ for toiletries, leaving the way open for someone completely unconnected with the Japanese giant to register that class somewhere and release ‘Sony Perfume’.
As with anything to do with Intellectual Property, the only way to fight these actions is through expensive legal cases in the courts.
Lambretta Clothing & Brandconcern
The Lambretta trademark has long been the subject of interest from those looking to make money. Back in the 1990s British businessman Derry Kunman saw an opportunity to leverage the brand on clothing and applied to register Lambretta in the UK for that class. The Lambretta Club of Great Britain initially opposed the registration but soaring legal costs lead Kev Walsh to abandon the action.
Kunman later contacted Scooters India Limited and agreed licensing terms to use the Lambretta trademark in certain classes. However he was not the only person watching the Lambretta name. Dutchman Walter Scheffrahn and his company Brandconcern began registrations of the Lambretta name for certain classes around the globe and in turn Kunman was forced to fight them. Kunman once told me that legal bills for fighting Brandconcern’s actions exceeded £1million.
Where do the millions come from to pay these lawyers? They come from licensing. If you own a powerful brand in a particular class (watches for instance) then you can license someone to produce ‘official’ watches. You can then get paid a licence fee without having any involvement in the manufacture or sales process.
It may seem like money for old rope, but licensing does require a certain amount of care. If those who are licensed to use the name produce poor quality products – like Lambretta t-shirts with pictures of Vespas and Scomadis on – then it detracts from the brand and damages its value for everyone.
New Lambretta Scooters
The story gets incredibly complicated and difficult to trace in the early part of this century. By this stage SIL were no longer making complete scooters – only spare parts and 3-wheelers – so there was a prime opportunity for someone to fill the gap.
Both Lambretta USA (using Taiwanese Adly scooters) and Motom Group (with Chinese Znen machines) in Italy offered ‘Lambrettas’ that were essentially re-badged oriental scooters. What did I say about damaging the brand for everyone?
Later, Motom went on to invest in a completely new design – penned by Italjet’s Alessandro Tartarini – which became the Lambretta LN125. Essentially the scooter underneath the part-steel bodywork was a new, dedicated chassis using parts from Taiwan’s SYM.
Sadly for Motom, by this stage the legal tide had turned and Walter Scheffrahn’s Brandconcern BV (fronting Lambretta Consortium) won rights to Lambretta for use on vehicles and blocked sales and distribution of the LN.
Italian singer Gigi D’Alessio allegedly lost 8 million Euros that he invested in the Cottone’s Motom Lambretta project.
Brandconcern and SIL
According to a recent ruling in the EU court in Luxembourg:
“Scooters India is the proprietor of EU trade mark LAMBRETTA, which was applied for on 7 February 2000 and registered by EUIPO [European Intellectual Property Office] on 6 August 2002. The goods in respect of which that mark was registered are included […] ‘vehicles; apparatus for locomotion by land, air or water’.”
“On 19 November 2007, Brandconcern filed an application for partial revocation of the trade mark LAMBRETTA under […] for the goods included, […] Class 12. In that regard, it pleaded lack of genuine use of that mark within a continuous period of five years.”
Translated to English, the situation described is that Brandconcern claimed the LAMBRETTA trademark for vehicles on the basis that SIL weren’t using it in that class.
At the time, the courts found in Brandconcern’s favour:
“On 24 September 2010, the Cancellation Division partially revoked the trade mark LAMBRETTA, with effect from 19 November 2007, in respect of the goods […] in Class 12. On 23 November 2010, Scooters India filed a notice of appeal with EUIPO against the decision of the Cancellation Division.”
The decision of the Cancellation Division was later overturned at appeal on a point of law. In February 2017 Brandconcern attempted to appeal that judgement; however they lost their appeal and were ordered to pay SIL’s legal costs, as you can read here.
VIDEO | The SIL Lambretta story part 1
What does all this mean?
Now there’s a good question.
This ruling does not decide the ownership of the Lambretta brand for vehicles, but it tells us that Scooters India Limited have not given up the fight for the name against Brandconcern/Lambretta Consortium/Innocenti SA.
Whoever wins this battle in the end is not for us mere mortals to decide. However, with Lambretta Consortium and many partners investing heavily in the release of new scooters and E-bikes, it also means that the prize for the winner has never been greater.
For the Lambretta Consortium I strongly suspect that it will be business as usual. Brandconcern have made a business of legal action over trademarks, so one small set-back won’t change their claims to the Lambretta brand.
The plan remains to launch the new Lambretta Vendetta at EuroLambretta in Adria in June. It will be really interesting to see what reaction the Vendetta gets from the classic Lambretta tifosi.