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In a recent High Court decision, Jaguar Land Rover (JLR) has lost its legal battle to register various trademark applications in relation to its 4x4 Defender model. The High Court upheld the decision by the UK Intellectual Property Office (UKIPO) to refuse most of JLR's trademark applications because they lacked distinctiveness.
JLR applied to register three-dimensional shapes of the Land Rover Defender 90 and 110 as 3D trademarks. These are depicted below.
JLR's trademark applications were opposed by Ineos Industries Holdings Limited. Ineos Automotive Limited, part of the Ineos Group, is due to release its own 4x4 vehicle, the Grenadier, in 2022. Reports have described the Grenadier as being inspired by other 4x4 vehicles such as the Defender.
When the matter came before the UKIPO, the hearing officer held that JLR's trademark applications:
The UKIPO concluded that JLR's trademark applications were not valid save for those goods unrelated to motor vehicles.
JLR appealed to the High Court on the basis that some of the tests applied by the UKIPO had been incorrectly applied or that the hearing officer had made errors in his findings of fact. In particular, JLR argued that the UKIPO had incorrectly applied the legal tests for determining whether the trademarks were distinctive.
Her Honour Judge Clarke, the High Court Judge who dealt with JLR's appeal, upheld the UKIPO decision. The Judge emphasised that the Court's role was one of review and that it should not substitute its own assessment for that of the UKIPO unless the Court were satisfied that there was a material error in law or that the UKIPO's findings were wrong so as to oblige the Court to substitute its own view. Having considered JLR's concerns about the evidence put before the UKIPO, Her Honour Judge Clarke concluded that she should not interfere with the UKIPO's decision and that JLR's trademark applications were not valid.
This case serves as a reminder that the registration of 3D shapes as trademarks are particularly challenging for brand owners. Even designs which some may feel are iconic or highly recognisable (such as the shape of the Land Rover Defender) may not meet the legal requirements of distinctiveness in order to be eligible for trademark protection.
Our team of specialist intellectual property disputes solicitors routinely advises on a broad range of disputes relating to trademarks, copyright, patents and design rights along with matters relating to data protection and confidential information.
Myerson have a specialist intellectual property disputes team that routinely advises on a broad range of disputes relating to trademarks along with other intellectual property disputes relating to copyright, patents, confidential information and data protection. The team is also highly skilled at advising on design rights and reputation management issues and are regularly instructed by clients from the technology, arts, media, textile and clothing sectors in the UK and internationally.
If you need advice on trademark or other intellectual property infringements, please do not hesitate to contact a member of the team today.
Telephone: 0161 941 4000