Background

In 2016, Jaguar Land Rover applied for, among others, four UK trade marks, two for the shape of the Land Rover Defender 90 and two for the shape of the Land Rover Defender 110 (in each case with and without the wheel). These applications were for classes 9, 12, 14, 28 and 37.

Ineos opposed the applications on the basis of sections 3(1), 3(2) and 3(6) of the Trade Marks Act 1994. Ineos is a chemicals company, but is developing a 4x4 called the Grenadier, due for launch in 2021.

UK Intellectual Property Office

Before the UKIPO, the hearing officer, Allan James, held that:

• The applications lacked inherent distinctiveness pursuant to s. 3(1)(b) for goods related to motor vehicles;
• The applications had not been shown to possess acquired distinctiveness for such goods; and
• The applications had been made in bad faith in relation to vehicles other than 4x4 vehicles.

He concluded that the applications were not valid save for those goods unrelated to motor vehicles. It followed that he did not need to decide s. 3(2).

With regard to inherent distinctiveness, the hearing officer relied on Floyd LJ’s decision in London Taxi Corp v. Frazer-Nash Research, namely it was for him to assess whether the applications “depart significantly from the norms and customs of the sector”.

He had before him, among other things, evidence from two different design experts, adduced by Jaguar Land Rover and Ineos respectively. Jaguar Land Rover’s design expert pointed to the vertical windscreen, arrow shot windows and alpine roof windows of the Defender as being particularly distinctive. Jaguar Land Rover also relied on published comments from journalists, such as Graham Hope in Auto Express, who said that “[t]he original Mini apart, there’s arguably no other British car that is as instantly recognisable …”

The hearing officer concluded, however: “I find that the shapes and appearance of the Defender did not depart significantly from the norms and customs of the passenger car sector …” He went on to say that “[it] is true that the use of ‘arrow shot’ rear windows and alpine side windows was unusual, if not unique, in the passenger car sector at the relevant dates. However, I find that these are minor variations from the norms and customs of the passenger car sector.”

As to acquired distinctiveness the hearing officer relied on Windsurfing Chiemsee and Nestle v Cadbury, explaining that he should consider: “… the market share held by the mark; how intensive, geographically widespread and longstanding the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertakings; the statements from Chambers of Commerce and industry and other trade and professional associations.”

Notably, Jaguar Land Rover submitted survey evidence supported by a Mr Malivoire, a renowned expert in UK trade mark surveys. Mr Malivoire concluded that 50% of those surveyed identified the shape with Land Rover. The hearing officer went behind this conclusion, however, finding that the range was in fact 20-40%. He also pointed to the relative small sales of the Defender prior to 2016 (circa. 6,000 units) and the small amount of advertising in support of it when concluding that the applications lacked acquired distinctiveness.

High Court

Jaguar Land Rover appealed to the High Court. While Jaguar Land Rover broadly accepted that the hearing officer directed himself correctly at law, it argued that some of the respective tests had been incorrectly applied or that the hearing officer had made errors in his findings of fact. Her Honour Judge Melissa Clarke heard the appeal.

HHJ Clarke found for Ineos, upholding the hearing officer’s decision. The court emphasised that its role was one of review and that it should not substitute its own assessment for that of the hearing officer unless it was satisfied that there was a material error in law or his findings were wrong so as to oblige the court to substitute its own view.

Having considered Jaguar Land Rover’s concerns regarding the evidence, HHJ Clarke concluded that she should not interfere with the hearing officer’s assessment and that the applications were not valid.