No defence for the Defender - Land Rover loses trade mark shape battle with Ineos

In a case that serves as a reminder of how difficult it is to achieve trade mark registration for 3D shapes, the High Court has rejected Jaguar Land Rover’s bid to register certain Land Rover Defender models as trade marks.

The case[i]

Jaguar Land Rover applied to register the three-dimensional shapes of the Land Rover Defender 90 and 110 as 3D trade marks (the “Marks”). The applications were opposed by Ineos Industries Holdings Limited - the Ineos group recently launched a competing 4x4 vehicle, the Ineos Grenadier described as “the spiritual successor to the old Land Rover Defender”.

UK IPO decision

The UK IPO Hearing Officer found that the Marks lacked inherent distinctiveness for goods and services relating to motor vehicles, and that they had not acquired distinctiveness for the goods or services applied for. The UK IPO allowed Ineos to proceed with its opposition and Land Rover’s applications to register the Marks were consequently refused.

Land Rover appealed this decision to the High Court, arguing that the Hearing Officer had not correctly applied the tests for determining inherent and acquired distinctiveness.

High Court appeal decision

The High Court found that the Hearing Officer had not made any material errors of law in finding that Land Rover’s application for the Marks should be rejected. As such, the High Court upheld the UK IPO decision.

Inherent distinctiveness

The Hearing Officer found that the design of the Land Rover Defenders pictured in the Marks did not depart significantly from the norms of the passenger vehicles sector, and although certain of the design features were unusual, these were only minor variations to the market standard. As such, the Marks lacked inherent distinctiveness.

In considering the evidence presented by each side, the Hearing Officer noted that elements of the designs that appeared important to Land Rover’s expert may be unimportant to, or may not even be registered by, consumers of passenger cars.

Land Rover appealed the UK IPO decision for a number of reasons, including that the Hearing Officer had rejected its expert evidence without sufficient reasoning. The High Court dismissed Land Rover’s appeal, finding that “a careful and detailed assessment of the expert evidence” had in fact been carried out by the Hearing Officer.

Further, the High Court found that no error of principle had been made by the Hearing Officer in his approach to the assessment of inherent distinctiveness, and that there was no reason to interfere with the UK IPO decision.

Acquired distinctiveness

For the purposes of establishing acquired distinctiveness, the Hearing Officer considered whether Land Rover could show that a significant proportion of relevant average consumers would perceive the shapes applied for (without further indication) as distinguishing goods that had been placed or permitted to be placed on the market by Land Rover from the goods of other undertakings. On the basis of this test, the Hearing Officer found that the Marks had not acquired distinctiveness.

In reaching this conclusion, the Hearing Officer had assessed and taken account of survey evidence submitted by Land Rover. However, on appeal, Land Rover argued that the Hearing Officer had failed to properly consider the survey evidence as part of the overall assessment.

The High Court found that the Hearing Officer had made no material error of principle in his assessment of acquired distinctiveness. The Court further noted that the Hearing Officer was not under an obligation to consider the survey evidence in any event. Land Rover’s appeal on this ground was therefore dismissed by the High Court, and the Hearing Officer’s decision was upheld.

Comment

This case serves as a reminder that the registration of three-dimensional shapes as trade marks can present a number of challenges for brand owners, particularly given that even those designs perceived by some as iconic or highly recognisable (such as the shape of a Land Rover Defender) may not meet the legal requirements of distinctiveness to be eligible for trade mark protection.