Jaguar Land Rover Limited (“JLR”) applied to register six 3D shape trade marks before the UK Intellectual Property Office (“UKIPO”) for its Land Rover Series 1, Series 2, Defender 90 and 110 Models (6 Applications). The 6 Applications were filed for a range of goods and services in Classes 9, 12, 14, 28 and 37 including vehicles and parts for vehicles, toy and model vehicles, vehicle maintenance, repair and customisation services. 

Representations of the 3D marks are outlined below:

JLR managed to overcome the objections raised by the UKIPO to the 6 Applications by filing evidence of acquired distinctiveness. However, when the 6 Applications were published for opposition purposes, INEOS Industries Holdings Limited (“INEOS”) opposed them. Whilst traditionally a chemical company, it has been widely reported that INEOS wants to break into the automotive industry with an off-road vehicle. 

The UKIPO held:

Lack of inherent distinctive character/descriptiveness

• The correct approach to non-conventional trade marks was that set down by the Court of Appeal in The London Taxi Corporation Limited v Fraser-Nash research Ltd and Another (“London Taxi”) that the registered shape must be one that departs significantly from the norm of the sector for products of that kind. The marks must also be perceived by the average consumer as identifying the origin of the goods.
• Whilst the “arrow shot” rear windows and alpine side windows were most unusual these were minor variations and therefore the shape and appearance of the Defender models did not depart significantly from the norms and customs of the passenger car sector. Therefore the 6 applications were devoid of any distinctive character in relation to passenger cars and toy cars etc.
• With respect to those goods and services in the 6 Applications which related to accessories for land vehicles and parts the 3D shape of a 4 X 4 type vehicle may serve in the trade to designate the intended purpose of the certain goods and therefore are excluded from registration under the UK Act (as they are descriptive). 
• For the remainder of the goods in the 6 Applications which had nothing to do with vehicles, INEOS’ objections failed. UKIPO did not accept the argument that the relevant average consumer would regard the use of the contested marks in relation to the remaining goods as purely decorative. 

Customary in the current language or in the bona fide and established practices of the trade 

• This objection was not considered for those goods and/or services which were already refused due to descriptiveness/lack of distinctive character.  Further the UKIPO rejected this objection for the remaining goods/services as there was no evidence that any of the 6 Applications had become generic for those particular goods/services. 

Acquired Distinctiveness 

• The evidence of use of the shapes and the external appearance of the Series 1 and 2 Land Rovers was insufficient to establish that such marks had acquired a distinctive character through use to a significant proportion of the UK public for passenger cars at the relevant dates for a number of reasons including that:
  • the sale of such vehicles ceased at least 44 years prior to the dates of the application;
  • evidence as to the appearance in films and TV shows was not persuasive;
  • any evidence of the distinctiveness of the Defender vehicles could not apply to the Series 1 and 2 Land Rover as the shapes were different in important respects.
• Whilst the UKIPO accepted the shapes at issue were distinctive to the motoring journalists, it did not accept that their views are likely to be representative of the views of the average consumers of passenger cars. 

Consists exclusively of a shape necessary to obtain a technical result 

• Basing its assessment directly on the overall impression produced by the sign(s) it found that the essential elements of the 6 Applications were not necessary to achieve a technical result. 

Consists exclusively of a shape which results from the nature of the goods themselves and/or gives substantial value to the goods 

• The UKIPO noted that this ground covers more than just naturally occurring shapes and for instance limitations of shapes resulting from the use of aluminium body panels could be relevant. Rejecting INEOS’ objection the UKIPO noted that much of INEOS’ case in this regard was based on technical limitations that only existed 50-60 years ago.

Bad Faith

• Even though the production of the Series 1 and Series 2 Land Rovers had ceased in 1972, the UKIPO found no bad faith as there was evidence that JLR continues to provide parts for the old cars and JLR had a reasonable commercial rationale for applying to register these marks.

Use of Survey Evidence

• While the UKIPO did not criticise the Applicant for conducting a survey of all users of passenger cars the UKIPO noted that the point raised in the London Taxi case about everyone possibly being a potential user of a taxi is not so relevant in this case. It may have been helpful for the UKIPO to know whether the level of recognition revealed by the survey was (or was not) particularly concentrated amongst actual or potential customers of Defender type cars. This case reinforces how important it is that full consideration is given as to how the survey should be structured and framed.
• Finally, the UKIPO noted that a degree of caution must be exercised when attaching weight to the evidence of design experts.  Differences in designs which may appear important to a design expert may not seem important to the average consumer. This does question the real need for expert evidence in cases such as this and the importance of properly conducted survey evidence as to the views of the average consumer. 

Outcome 

The 6 Applications were refused in respect of all goods and services with the exception of certain limited goods in Classes 9, 14 and 28.

New Irish Trade Mark Rules

Under the new Irish trade mark rules introduced in January 2019 if JLR had filed the 6 Applications in Ireland, INEOS would not have had the same basis to oppose them here as it is no longer possible for third parties to oppose a mark on absolute grounds. INEOS would have to wait until the marks were registered in Ireland before it could then seek to invalidate them on absolute grounds. 

Caution for Brand Owners

Finally, it was noted that JLR’s tolerance of third parties marketing passenger cars that looked like the Defender model but which had been rebranded under third party marks made the UKIPO question whether JLR really believed the shapes of the Defender models performed the essential function of a trade mark. This observation by the UKIPO highlights how important it is for brand owners to not acquiesce in the use of their marks/designs by third parties.

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