General Motors has finally officially registered a trademark for General Motors Specialty Vehicles (GMSV) in Australia – but smooth sailing isn’t guaranteed for the American giant, which may have to fight for the right to use the name.
The General on July 3, 2020 filed to trademark the letters ‘GMSV’ and a logo reading ‘SV Specialty Vehicles’ in classes including motor vehicles, cars, and advertising in relation to those classes.
We reported in June several trademark applications for ‘GMSV’ were submitted on May 12, 2020. They weren’t submitted by General Motors though, having instead been registered by Laser Cleaning Machines Australia Pty Ltd.
The listed address for the same company holds the registration for both GMSV Pty Ltd and GMSV Performance Pty Ltd.
That registrant took steps to claim the trademark under the same two classes commonly used by vehicle manufacturers to protect their trademarks.
Trademark classes 12 and 35 relate to a number of categories including motor vehicles and cars, along with the advertising of those.
A website bearing a GMSV logo surfaced following the trademark registration by Laser Cleaning Machines Australia Pty Ltd, providing what enthusiasts thought would be the first look at the future of GM in Australia.
Along with cleaning products and branded clothing, the GMSV website features a vehicles tab with a photo of a covered car, and the Facebook page says “GMSV Official Licensed Merchandise” is coming soon.
HSV and the Walkinshaw Group shut down talk of the page being an official presence.
“That website and trademark has no affiliation with HSV or the Walkinshaw Group in any way,” said Chris Polites, executive director of sales, marketing, and after sales at Walkinshaw Automotive Group.
The trademark registration by General Motors across a broad number of trademark classes suggests the specialty right-hand drive conversion operation will kick off locally soon, but the question of what it means for the trademark registrations currently in place isn’t quite clear.
We spoke with Sophie Glover, senior trade mark lawyer at LegalVision to see what this means for the original trademark owner.
“The GMSV marks Australian trade mark no.s 2085302, 2085543 and 2087761 are currently pending and waiting for assessment from IP Australia. This does not preclude registration by another interested third party who may have earlier prior rights to identical or similar marks,” Ms Glover said.
“A third party can oppose trademark registration during the trade mark opposition period (after marks are accepted by IP Australia).
“A third party may choose to oppose the registration of a trade mark for several reasons including if the trade mark is similar to another mark, the applicant is not the owner of the mark or the trade mark is likely to deceive or cause confusion due to the reputation of another mark.”
“It is the responsibility of a trade mark owner (whether their rights are registered or unregistered) to monitor the trade mark register and/or the Australian marketplace for potential infringement and take legal action accordingly.
“Registered trade marks can also be revoked through the court system if required once registration occurs,” Ms Glover said.
The trademark applications made by General Motors and Laser Cleaning Machines Australia Pty Ltd haven’t yet been formalised, with applications awaiting examination and expecting formal reporting by November 2020.
By establishing a web presence, the GMSV web shop currently selling cleaning products under the ‘officially licensed’ GMSV name is hoping to retain use of the GMSV in line with its trademark application.
It could mean a big payday for the original trademark applicant. The process of fighting a trademark application by a third party can be costly, with rightful trademark owners sometimes opting to settle instead of spending money on legal fees. Transfer of trademarks is a legitimate option.
“What happens to trade mark no.s 2085302, 2085543, and 2087761 will depend on many factors. General Motors may be considering its options in terms of legal action against the applicant of the marks for use and registration of the marks. In general, trade mark rights can be transferred or withdrawn,” Ms Glover said.
The other question is; do Australian customers want anything to do with another General Motors entity locally given the nasty departure of Holden from Australian shores?
When Holden announced it would leave the Australian market, General Motors (GM) committed to bringing “specialty” vehicles such as the mid-engined Chevrolet Corvette sports car and Silverado pickup Down Under through an organisation expected to be called General Motors Specialty Vehicles (GMSV).
Details about the organisation haven’t yet been finalised, but we know it’s likely to be a continuation of the work carried out by the company formerly known as Holden Special Vehicles (HSV), which has been importing the Chevrolet Camaro muscle car and Silverado ute to Australia, converting them to right-hand drive, and selling them in HSV showrooms.
Additionally, the website address gmsv.com.au now also redirects to the HSV website.