Road To Refusal For Land Rover Shape Trade Marks

This article was originally published in the February 2020 issue of the CITMA Review.

This case concerns six trade mark applications filed by Jaguar Land Rover Limited (JLR), to register the shapes of its Series 1, Series 2 and Defender cars in the UK.

The applications covered a range of goods and services in Classes 9, 12, 14, 28 and 37. JLR successfully overcame descriptiveness and non-distinctiveness objections during examination. However, the applications were then opposed on numerous grounds by Ineos Industries Holdings Limited (Ineos), a company that wished to produce cars in the shape(s) of JLR's discontinued Defenders. The Oppositions were consolidated.

Inherent distinctiveness - Sections 3(1)(b) and (c)

With reference to The London Taxi Corporation Ltd v Fraser-Nash Research Ltd and Another [2017] EWCA 1729 (Civ), the Hearing Officer (HO) considered whether the shapes, when viewed in their entireties, depart significantly from the norms and customs in the passenger car sector.

The assessment focused, in particular, on features that render the shapes "boxy" and counter-aerodynamic, and on the Defender vehicles' "arrow-shot" and "alpine" windows.

When compared in their entireties against the vehicles of third parties, the Hearing Officer determined that while the Defender shapes have some "unusual" features, these are merely "minor variations" from the norms. Accordingly, all of the shapes were found to be devoid of inherent distinctive character for (land-based) vehicles.

The fact that the vehicles look "old-fashioned" was considered relevant. However, on the basis that consumers are "well aware" of "retro" designs, the Hearing Officer did not consider this enough to find that the shapes depart significantly from the norms.

The Hearing Officer found the marks non-distinctive for toys and models, which can assume the shapes of cars, and that the shapes may indicate the intended purpose of goods/services that relate to cars. Additionally, the Hearing Officer found the marks non-distinctive for goods such as cufflinks and key rings, which can take the shapes of cars for decorative purposes.

However, the Hearing Officer found the shapes to be inherently distinctive for statues and statuettes, which were deemed to typically take the form of people or animals, and for Christmas decorations, commenting: "There is nothing about [the shapes] which evokes Christmas."

In addition to certain goods in Classes 9 and 28, the Hearing Officer...