Team Ineos doesn’t just win road cycling events or sponsor marathon record attempts, they win at Intellectual Property Office as well.  This time it was against Jaguar Land Rover. To see the route that Ineos took to oppose a 3D trade mark application by Jaguar Land Rover (JLR), read on (unless you are currently driving in which case pull over first).

It is no secret that Ineos would like to develop its own 4×4 inspired by the Defender and to be built in Wales.  It was mentioned in this action that JLR was attempting to prevent this by registering a TM.  On this basis, the opposition by Ineos forms part of its business strategy and this is a good reminder to business owners and entrepreneurs who are about to start a new venture – what IP (particularly registered IP) is out there that you may infringe on and what steps can you take to protect yourself (even preemptively).

Key issues considered in this case regard the shape of what is being depicted in the trade mark application – take note anyone looking to trade mark a graphical depiction of a physical product.  Fasten your seat belts.

Background

The events leading up to this dispute go a long way to showing the commercial rationale behind the registration and opposition.  The Land Rover Defender (Series 1) was launched at the Amsterdam Motor Show in 1948.  The vehicle was developed for farm and light industrial use and was a commercial success.  The car went through further iterations, a Series 2 model being produced in 1958 and the Defender 90 and 110 models were introduced in or around 1983.  In 1990, the car acquired the name “Defender”.  In 2015 the 2 millionth vehicle was produced, but in 2016 the brakes were put on mass production.

By November 2015 Ineos became aware that JLR intended to cease mass production and Ineos contacted JLR to establish whether it would be will to sell production equipment so that Ineos could continue to produce the Defender.  JLR considered the proposal, but eventually wrote to Ineos setting out that the production of any similar vehicle, in terms of shape or appearance, would constitute a breach of its IP rights and a misrepresentation that a connection between the vehicles existed.

The Issues

Jaguar Land Rover (JLR) applied to register six trade marks consisting of the three dimensional depictions of the Defender series of Land Rover.   The application contained six views of each shape.  One of each was set out in the decision.

It is worth pointing out that all of the applications were initially objected to on the basis that the shapes were considered to be descriptive of a sports utility vehicle and devoid of any inherent distinctive character.  The scope of the application was narrowed and JLR submitted evidence that the marks had acquired distinctive character through long use in trade.

Ineos opposed the registration on various grounds, including that the signs are not capable of being graphically represented or distinguishing goods or services, that they are descriptive or otherwise devoid of distinctive character, that they have become customary in the established practice of trade, that the shapes result from the nature of the goods themselves, or are necessary to achieve a technical result.  Ineos also opposed the registration on the basis that registering the shapes would be contrary to public policy and that the shapes were filed in bad faith.

Lack of Inherent Distinctiveness

It was noted that most of Ineo’s objections under ss.3(1)(b) and (c) “depend on the correctness of its central submission that the shapes at issue do not depart significantly from the norms and customs of the vehicle sector in such a way that consumers will appreciate that they designate the goods or services of a particular undertaking.  The case that was considered was The London Taxi Corporation Limited v Fraser-Nash Research Ltd and Another.

In London Taxi, Floyd L.J. noted that: a necessary, but not sufficient, condition for registration in the case of a mark consisting of a shape of a product was that the registered shape must be one that departs significantly from the norm or customs of the sector for products of that kind.

Floyd L.J. also referred to Freixenet – which sets out that in order for a trade mark to have distinctive character, it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from other undertakings.

Certain features of the Land Rover design were examined, including the square “two box” shape, the use of flat body panels, flat glass and the incorporation of both alpine and “arrow shot” windows. The question at issue was whether the shapes as a whole departed significantly from the norms and customs of the sector.    This was further clarified to not being whether the shape of a 4×4 vehicle departs significantly from the shape of hatchback or a sports car, it must depart significantly from shapes used in any sector of the passenger car market, including the 4×4 sector.

It was held that “although there was a significant design element in the way that the external elements of the vehicles are configured, there is nothing about the configuration which makes the resulting shapes depart significantly from the norms and customs of the sector”.  As a result the contested marks were considered to be devoid of any distinctive character in relation to passenger cars.  The case may have taken a wrong turn at this point from JLR’s point of view, but there was still the issue of Acquired distinctiveness.

Acquired distinctiveness

The guidance for acquired distinctiveness was provided by the CJEU in Windsurfing Chiemsee (joined cases C-108 & C-109/97).  The following factors are to be taken into account:

• market share held by the mark;
• how intensive, geographically widespread and long-standing use of the mark has been;
• the amount invested by the undertaking in promoting the mark;
• identifying goods as originating from particular undertakings; and
• statements from chambers of commerce and industry or other trade and professional associations

If on the basis of these factors a significant proportion of the relevant class of people identify the goods as originating from a particular undertaking because of the trade mark, then the requirements under 3(3) of the Directive are satisfied.

The shapes of both types of models of the Defender

JLR switched gear and produced a mountain of evidence to show that the ‘701 and ‘751 marks had acquired distinctiveness.  This included relying on the appearance of the Series 2 Land Rover in films such as Born Free (1966), The Italian Job (1969) and Omega Man (1971) along with other appearances.  However such evidence was deemed insufficient to establish that the marks had acquired distinctiveness.  The Defender models were also considered and evidence was provided in the form of advertisements, figures relating to the promotional spend and quotations from  motoring journalists.  There was also a quote from Ineos’s Chairman, Jim Ratcliffe, who described the Defender as “Iconic” in an interview with the Sunday Times in July 2016.  However, the evidence provided left Allan James with serious doubts that the marks had indeed acquired the distinctive character.

The relevant Trade Mark law

Nestle SA v Cadbury UK Ltd [2017] EWCA Civ 358 was considered because it addresses the issue of whether the shape of the Defender itself guarantees the trade source to the consumer.

“the CJEU has held that it is not sufficient for the applicant to show that a significant proportion of the relevant class of persons recognise and associate the mark the the applicant’s goods.  However, to a non-trade mark lawyer, the distinction between, on the one hand, such recognition and association and, on the other hand, a perception that the goods designated by the mark originate from a particular undertaking may be a rather elusive one.”

At paragraph 105, it was noted that according to the settled case law of the CJEU, the essential function of a trade mark is:

“to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin…”

As a result, the question became whether JLR has shown that a significant proportion of relevant average consumers would perceive the shapes applied for, without further indication, as distinguishing goods which have been placed on  the market by JLR, or with its consent, from those of other undertakings.

It was pointed out by Ineos that JLR marketed the Defender models under the distinctive words LAND ROVER and DEFENDER and as a result such words played the primary distinguishing role.  This may be of interest to brands who are considering attempting to register a 3D Trade Mark – do you have sufficient confidence in the mark to produce an advert which relies on no other distinguishing features (words or logos).  It would seem that such an advert would be more persuasive when presented as evidence of distinguishability.

in light of these issues, and others, the Registrar had doubts as to whether the shapes of the Defender models had acquired distinctive character.

The Survey

With a decision at a cross road, permission was granted for JLR to file survey evidence.  Broadly speaking, in the survey 495 people were shown laminated cards with four pictures of a Land Rover Defender 90 (which had all branding removed).  The respondents were asked, “what can you tell me about what you are looking at?” and the answer was recorded.  Depending on their answer a further question could have been asked regarding their first response.

11% of respondents mentioned LAND ROVER only before being asked any questions, after the first question this rose to 44% and after a third question 50% had mentioned LAND ROVER (including mentions of DEFENDER and DISCOVERY).

The test was whether a significant proportion of that public would consider the mark to be distinctive.  It was held that the survey (and the evidence as a whole) did not establish that the shapes at issue had acquired a distinctive character.  This is where the wheels came off for JLR.

Other Issues

Other items in the specification were considered, including toys and merchandise (for which Land Rover obtained a mixed result) as were the remaining grounds of opposition.

The opposition under s.3(2)(b) (signs which consist exclusively of the shape of goods which is necessary to obtain a technical result) was considered in greater detail than s.3(2)(a) and s.3(2)(c) on the basis that if it failed so too would the other grounds.  In fact this argument was rejected on the basis that it was not essential for a 4×4 to have a box shape in order to obtain the functionality that the Defender had.

The public policy ground of opposition (s.3(3)(a)) and the bad faith grounds (s.3(6)) were both rejected on the basis that registration of the signs would not “constitute a genuine and sufficiently serious threat to a fundamental interest in society”.

As there was no evidence that JLR intended to use the marks in relation to “apparatus for locomotion by air and/or water” (which would have surely brought new meaning to the phrase “off road”) it was found that the application to register the marks in relation to those goods was made in bad faith.

Overall Outcome

JLR was allowed to register the 3D marks in relation to a handful of goods/services under class 9, 14 and 28 but Ineos had the greater of the success and costs were awarded.  It will be interesting to see how the Ineos/ Land Rover race develops down the road. Land Rover have brought out a new Defender and Ineos is in the process of developing one.

Decision

Full decision here – https://www.ipo.gov.uk/t-challenge-decision-results/o58919.pdf