Owning The Hype: Securing Your Limited Edition's Legacy With Trademarks
- Kanika Bansal & Soumya Juneja
- Oct 15
- 6 min read
Introduction
A limited-edition product is one which is released by a brand for a specific duration of time in restricted quantities. For instance, Cadbury’s special Diwali packs or unique festival packaging. Suzuki characterizes restricted release items as those "sold in an express that makes them hard to get due to organizations restricting their accessibility to a specific period, amount, area, or channel".[1] Such limited editions are made scarce, restricted to certain times, quantities, or markets to enhance their exclusivity and desirability.
Additionally, the principle of scarcity works because when supply is low, demand rises, making the product appear premium. Brands benefit from the buzz/trend, and consumers feel that they are a part of something unique. However, while limited editions succeed commercially, their temporary nature creates legal challenges in securing lasting trademark rights. Because these products are designed to be temporary, protecting them under trademark law is not straightforward. Trademarks depend on continuous use to remain valid, but limited editions by nature are not continuously sold. This article examines the tension between short-term exclusivity and long-term legal protection, focusing on the risk of cancellation for non-use and the possibility that strong consumer recognition might still secure lasting rights.
Trademarks and protection
A trademark may take various forms, it can be either a word, a label, a design or even the shape of a product. A trademark acts as a source -identifier and mainly helps consumers identify a business amongst various other businesses in the market. A continuous and long use of a trademark not only helps a brand gain recognition but also reinforces the brand’s identity.
Trademark law also imposes certain limits; if a mark is not put to commercial use for a period of five years and three months after registration, it becomes vulnerable to cancellation.[2] This ensures that the brands have not merely parked their trademarks without any active use.
This creates a challenge for such limited edition products. Since these products are released for a short-duration. The question, therefore, is if a brand can safeguard rights for something that was never meant to be available for a long term.
Ferrari 250 GTO Case
The most compelling case comes from the Ferrari 250 GTO (Gran Turismo Omologato)[3]. Produced between 1962-1964, only 39 units of this car were produced for sale, each personally approved by Enzo Ferrari, and then sold to individual buyers. Ferrari also registered the car’s shape as a trademark in 2007 and 2008 under three classes:
i. Class 12 (vehicles);
ii. Class 25 (clothes) and
iii. Class 28 (model cars)
In 2018, Ares Design sought to produce a modern version of the 250 GTO model. It challenged the Ferrari’s registrations before the European Union Intellectual Property Office (EUIPO), arguing that Ferrari has not genuinely used the mark since 43 years and that Ferrari has registered the shape in bad faith. In July 2020, the Cancellation Division of the EUIPO realised that the registration of the shape mark is no longer valid. It was held that the registration is liable to be cancelled as there has not been any continuous use since five years. Resultantly, the trademark registration was struck off under Classes 12 and 25, though protection under Class 28 (model cars) still remains in force.
This case underlines the principle of ‘use it or lose it’. This principle provides that the law does not allow the registered proprietor to block others from using similar marks for similar goods if the proprietor has failed to put its own mark to genuine use. For limited edition products, this poses a real challenge as such products by their very nature are not intended for continuous sale. Therefore, such marks are vulnerable to be struck off the register once they are no longer in continuous use.[4]
This incentivizes trademark owners to use their registered trademark instead of leaving it dormant and overcrowding the register. Commercial use and thus, the documentation of the said use is necessary to avoid non-use cancellation. The core legal dilemma is that a trademark demands continuous use in commerce, however, that directly contradicts the limited edition sales strategy, which is founded on scarcity and restricted availability. Accordingly, these marks can be removed if their use is deemed to be insufficient or too sporadic, thereby forfeiting the owner’s statutory rights to exclusivity and allowing third parties to successfully register and use similar trademarks.[5]
The limited editions strategy presents a classic business paradox, prioritizing short-term profit and heightened brand visibility over long-term intellectual property stability. While scarcity models, like product "drops" drive immense buzz and premium pricing, they fundamentally contradict the principles of Trademark law, which requires consistent, continuous commercial use of a mark to establish it as a reliable source identifier.
Trademark Dilution in the Context of Limited Editions
A trademark is said to be diluted when its distinctiveness weakens. Trademark dilution can also occur when the mark is not in direct conflict with any other. It can occur in two ways:
● Dilution by blurring[6]: This happens when there are various variations or forms or unauthorized use of a mark which makes it less unique
● Dilution by tarnishment[7]: This happens when a mark is associated with another unrelated or inferior goods
Limited edition products are particularly vulnerable to blurring. This is because brands release one-off logos, packaging styles, or design elements that fragment the brand identity. Brands that frequently introduce and retire marks through one-off editions risk trademark dilution by blurring, as the public struggles to associate one singular mark with the brand's core identity. If these marks are not carefully managed, the brand may lose its core brand identity. Therefore, a strong and consistent strategy is required to continue reinforcing the brand identity. This fragmentation complicates the ability to secure robust TM registration and makes future enforcement against counterfeiters or infringers significantly harder, ultimately eroding the brand's primary legal asset protection despite its current commercial success. The brand gains transient fame but sacrifices the enduring legal distinctiveness necessary for lasting market dominance.
Well-Known Marks and the Limited Edition Paradox
A key question arises: what if a limited-edition product becomes so deeply embedded in public memory, say, through global recognition, media coverage, or cultural impact it achieves the status of a well-known mark?
A mark that is recognised as well-known enjoys a higher level of protection, which can extend even to products that are completely unrelated, and this holds true even if the mark is not used continuously. For instance, the Nike Air Jordan 1 “Chicago” colourway, introduced in 1985 continues to resurface in auctions, media coverage, resale markets[8]. This limited edition run is widely regarded as a symbol closely tied to the Nike brand. Another such example is of the Coca-Cola contour bottle, created in 1915, the distinctive shape of the bottle remained so deeply embedded in consumer memory that it is almost inseparable from Coca-Cola even after the other commemorative or special editions were discontinued.[9]
In circumstances like these, the principle of ‘use it or lose it’ is not applicable in the conventional fashion. The wide recognition and the symbolic presence of the mark itself act as evidence of its ongoing distinctiveness and exclusive brand association. This creates a paradox: while most limited-edition marks are vulnerable to cancellation due to non-use, certain symbolic ones achieve the status of well-known marks and are granted a higher protection against mis-use.
Conclusion
The problem lies in the very limited nature of such products which directly conflicts with the principle of continuous use of a mark. If a brand is not careful of maintaining its marks, it faces the risk of cancellation or dilution. However if a limited edition achieves such strong public recognition and association so as to qualify as a well-known mark, its reputation can endure the effects of the product’s evaporation. In such cases, trademark law protects the mark's distinctiveness, safeguarding its good name even without constant use. Therefore, the key task for brand owners is finding the right balance: they must use their trademarks just enough to protect their legal standing, while simultaneously harnessing the exclusivity of limited editions to generate buzz and hype. When executed correctly, the trademark can ensure the legacy of the limited edition far exceeds the product's actual time on the shelf.
Soumya Juneja
Associate
Kanika Bansal
Associate
[1] Sakshi Shairwal, LIMITED EDITION PRODUCTS AND IP RIGHTS, Lexology, https://www.lexology.com/library/detail.aspx?g=084396a6-4cf2-478d-b92a-a3aaecf98e4b
[2] §47, The Trade Marks Act, 1999, No. 47 of 1999, Acts of Parliament, 1999 (India); Sampada Kapoor, LIMITED EDITION PRODUCTS AND THEIR IP PROTECTION, IIPRD Newsletter, https://www.iiprd.com/limited-edition-products-and-their-ip-protection/#:~:text=Limited%20Edition%20Products%20are%20a,than%20building%20a%20new%20trademark
[3] LIMITED EDITION PRODUCTS AND THEIR INTERFACE WITH COPYRIGHT, DESIGN AND TRADEMARK LAWS, SpicyIP, https://spicyip.com/2020/10/limited-edition-products-and-their-interface-with-copyright-design-and-trademark-laws.html
[4] Ibid.
[5] Vindhya S. Mani, Divya et al, TRADEMARK SIESTA: THE RISKS OF NEGLECTING USE OF A TRADEMARK, https://www.lakshmisri.com/insights/articles/trademark-siesta-the-risks-of-neglecting-use-of-a-trademark/#
[6] On Dilution by Blurring (Foundational Article):
Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927).
[7] On Dilution by Tarnishment (Modern Scholarly Treatment):
Jerre B. Swann, Sr., Dilution Redefined for the Year 2002, 92 Trademark Rep. 585 (2002).
[8] Aashna Aggarwal, Sneakers, Status & Streetwear: How India’s Gen Z Is Driving a Billion-Dollar Culture, Medium (Nov. 28, 2023).
[9] Hindustan Coca-Cola Beverages Pvt. Ltd. v. N. R. Syam Kumar, International Journal of Advanced Legal Research, Vol. 4, Issue 3 (Feb. 2024).
