Morrisons revives Safeway brand, but trademarks could be at risk

UK supermarket Morrisons will revive the Safeway brand by developing a range of products for wholesale to independent retailers, but lawyers say the trademarks could be challenged.

Yesterday, November 22, Morrisons  announced the plan, adding that the range will be available from early next year.

Morrisons acquired supermarket chain Safeway back in 2004 in a deal worth  £3 billion ($5.2 billion at the time, according to the  BBC).

According to the supermarket, the reintroduction of the Safeway brand will enable it to leverage “its sourcing and unique food maker skills to give independent retailers’ customers access to great quality products”.

David Potts, chief executive of Morrisons, said: “By working with well-established partners and reviving the Safeway brand, we are making our products more accessible to more customers.”

Adrian Smith, partner at Simmons & Simmons, believes the announcement is an “interesting development”.

He explained that, over the years, a number of well-known brands have disappeared off the high street but that it isn’t unheard of for “entrepreneurs” to repurpose these brands.

“Morrisons seems to have maintained the trademark registrations for ‘Safeway’ since it bought the supermarket in 2004,” said Smith.

“But we don’t know if Morrisons has encountered any issues with third parties using the Safeway brand since it stopped using it, or whether there have been or will be challenges to the validity of the marks due to their having been out of use for a period.”

Smith added that it is interesting to consider what value Morrisons might now be ascribing to the goodwill of the Safeway brand compared to whatever value it had at the time it was “retired”, given that the goodwill must have diminished substantially during the period it has been out of use.

Iain Connor, partner at Pinsent Masons, added that Morrisons has kept the Safeway brand alive “in the sense that it has maintained the trademark registrations”.

However, given that it is more than five years since the acquisition and rebranding of the stores, “it is not immediately clear what use has been made of the Safeway brand and so it could be liable to revocation for non-use”.

Connor added: “It will be interesting to find out whether Morrisons took steps to maintain the brand through some less prominent use than on store-fronts, failing which it might be open to a challenge.”

The supermarket owns a number of EU and UK trademarks for ‘Safeway’, including  EU000120386,  EU007277271 and  UK00001014831.