The first Land Rover Defender, which was intended for life on the farm, began its journey in 1949. The Defender model has had many admirers over the years. One of them was Sir Jim Ratcliffe, a Monaco-based British billionaire turned financier and industrialist and current CEO of the newly formed Ineos Automative, part of Ineos Industries Holding Limited (“Ineos”). Sir Jim recently set about creating his own “spiritual successor” to the Defender, which he named “the Grenadier.” Due to launch by early 2022, the Grenadier has the same rugged off-roader DNA as the Defender. Unsurprisingly perhaps, Ineos has been recently sued by Jaguar Land Rover (“JLR”) for trademark infringement.
JLR has been in for a long haul to protect its trademark rights for the shape of its iconic Defender SUV in the courts for the last four years — it first lost a court battle pitted against the Ineos owner Sir Jim Ratcliffe in 2019. Interestingly, however, in a recent trademark dispute between the two automotive companies — Jaguar Land Rover v. Ineos Industries, the High Court of Justice of England and Wales held that the three-dimensional shapes of the Land Rover Defender model are not eligible for trademark registration as they lack inherent or acquired distinctiveness.
Background Jaguar Land Rover filed four trademark applications with the UK Intellectual
Property Office for the following shapes of the Land Rover Defender cars as three-dimensional marks.
These applications were filed for a range of goods and services pertaining to Class 9 (computer hardware, firmware or software), Class 12 (vehicles), Class 14 (horological and chronometric instruments), Class 28 (toys, games and playthings), and Class 37 (conversion, repair, servicing) as per the Nice Classification. The applications were refused as they were contrary to the provisions laid out in the UK Trade Marks Act 1994 (Section 3(1)(b) and (c)) insofar as they were considered to be descriptive of a sports utility vehicle and devoid of any distinctive character.
Ineos Automative opposed the applications on basis of the UK Trade Marks Act 1994 (Sections 3(1), 3(2) and 3(6) and subsequently, JLR filed a counter statement contending that they had acquired distinctiveness through extensive use in relation to the goods for which trademark protection was being applied.
The key question before the “hearing officer”, Allan James, was whether a significant section of relevant average consumers would be able to make an assertion that the shapes or the shape of their packaging for which protection was being sought would be considered distinguishable enough — in the absence of a graphic or word element — to be able to identify the source of origin of goods covered by such a three-dimensional mark when placed in the market.
JLR filed a notice of appeal to the High Court and argued, among other things, that the hearing officer had not correctly applied the tests for determining inherent and acquired distinctiveness.
High Court Judge Melissa Clarke had heard the appeal and found that the “hearing officer” had made no material error of principle in his assessment of the principle of acquired distinctiveness. She further noted that the hearing officer was not under any obligation to consider the survey evidence presented by JLR. JLR’s appeal was dismissed and the hearing officer’s decision was upheld.
UK Intellectual Property Office
What follows is a glimpse of what transpired back in October, 2019, wherein the hearing officer allowed the opponent Ineos to proceed with its opposition.
To begin with, the hearing officer considered a trade mark survey commissioned for the purpose of demonstrating that the marks had acquired distinctiveness. The survey was supported by Philip Malivoire, a well-known UK-based market research consultant and an expert witness who had overseen many trademark surveys in the past, assisted the tribunal in showing that up to 40 percent of respondents gave clear unequivocal answers indicating that the vehicle shown to them was Land Rover Defender. In conclusion, the hearing officer opined that the survey, therefore shows a significant, but not overwhelming, degree of recognition of the shape of the Land Rover Defender 90 amongst private car users.
The hearing officer also remarked that on the face of it, the trademarks for which protection was sought were devoid of any distinctive character in relation to the goods they were covered for as the applicants did not show that they had acquired distinctiveness through commercial use for the goods in question. The hearing officer applied the principles from one of the landmark cases of the Court of Justice of the European Union (“CJEU”) with respect to assessing the distinctive character of a mark to this case. A case heard by the German Landgericht (a mid-level court in the present-day judicial system of Germany) in 1999 (C-108/97, Windsurfing) – suggests that evidence to prove distinctiveness might include (1) the market share held by the mark, (2) the intensity and length of the trademark’s use and its geographical coverage, (3) the level of investment in promoting the mark, (4) the number of relevant consumers that associate the mark with the goods or services that originate from the owner of the mark; and (5) statements from chambers of commerce and industry or other trade associations as to the use of the mark.
Moreover, another landmark case was referred to by the hearing officer for the assessment of acquired distinctiveness – [Société de Produits Nestlé v Cadbury UK Ltd  EWCA Civ 358], wherein it was opined that at least a significant proportion of average UK consumers would have identified passenger cars (in this case) corresponding to the shapes at issue as originating from a particular undertaking because of the trademarks applied for. Subsequently, the hearing officer relied on Floyd LJ’s decision in London Taxi Corp v. Frazer-Nash Research —“The applicant must prove that, as a result of the use he has made of the mark, a significant proportion of the relevant class of persons perceives the goods designated by that mark, as opposed to any other mark which might also be present, as originating from a particular undertaking. Put another way, the mark must have come to identify the relevant goods as originating from a particular undertaking and so to distinguish those goods from those of other undertakings.”
He also made an observation that the applications that had been applied for with respect to vehicles other than that of “4×4 land vehicles” were made in bad faith.
Taking the aforementioned factors into account, the hearing officer on 3rd October, 2019, directed Jaguar Land Rover Limited to pay Ineos Industries Holdings Limited a sum of £5500.
High Court Appeal
An appeal was sought by the Appellant (“JLR”) from the decision of the UK Intellectual Property Office (“UKIPO”) dated 3rd October, 2019, against the Respondent (“Ineos”). JLR appealed on two grounds relating to inherent and acquired distinctiveness of the marks. Ineos contended that the Hearing Officer’s (“HO”) decision on these two points was correct and should be upheld.
Concurring with the hearing officer’s decision and in line with the principles set out in Talk for Writing Trade Mark (O/017/17, 19th, January, 2017 with respect to sections 3(1)(a), (b), (c) & (d) of the the UK Trade Marks Act 1994 and The Royal Mint Ltd v The Commonwealth Mint and Philatelic Bureau Ltd  EWHC 417 in Para 18, the High Court noted that it should not substitute its own assessment for that of the hearing officer, unless it is satisfied that he has made a material error in law or his findings are wrong. Situations deemed to be “wrong” encompass those in which a decision is (a) unsupportable, (b) simply wrong, and (c) where the High Court is doubtful about the view expressed by the hearing officer, which, on balance, it concludes to be wrong.
In considering the competing evidence put forward by each side, the High Court dismissed Land Rover’s contentions, finding that “a careful and detailed assessment of the expert evidence” and other evidence in respect of the variants relied upon by JLR had in fact been carried out by the hearing officer who is an expert himself, sitting in a specialist tribunal. The Court further opined that “their decisions should be respected unless it is quite clear that they have misdirected themselves in law. Appellate courts should not rush to find such misdirections simply because they might have reached a different conclusion on the facts or expressed themselves differently” – Baroness Hale of Richmond warned in the contest of specialist tribunals [AH (Sudan) v Secretary of State for the Home Department].
In conclusion, the High Court found that no error of principle had been made by the hearing officer in assessing inherent distinctiveness from the perspective of an average consumer, and that there was no reason to interfere with the UK IPO’s decision.
Lessons for India: What lies ahead?
This reinforces the difficulty of securing trade mark protection for 3-D shapes, even where a product is a well-known amongst a large section of the public, and in a way guides us that an appeal is not an opportunity for a retrial — the High Court is not bound to substitute its own assessment unless it is satisfied that a hearing officer in this case or otherwise a lower court perhaps, has made a material error in law or that his or her findings are wrong.
The UKIPO has done a remarkable job of assembling a compendium of precedents and in constructively applying established principles relating to three-dimensional shapes as trademarks under the Trade Marks Act, 1994. In doing so, it has struck the right cord in examining the issue at hand, while contributing to an on-going discussion on the role of conducting opinion polls and surveys in the realm of trademark law.
The bare minimum, what Indian courts should endeavour to learn from such a case is to search for a purpose of conjoining a legal standard to grant approval to distinctive trademarks that are able to prove their uniqueness in the open market backed by evidentiary value.
With the uptick in high-profile cases that have increased over the last few years with respect to trade mark protection in relation to shape marks in India, this judgment has successfully increased awareness and understanding of the concepts of establishing principles of inherent and/or acquired distinctiveness, while simultaneously providing the legal community with a blueprint for interpreting how best to craft a trade mark protection and enforcement strategy when it comes to shape marks in modern day practice.
The author is an Intellectual Property Lawyer based in New Delhi. He is a member of the FICCI IP Forum and Editor of The Trade Mark Reporter, International Trademark Association (INTA). He earned LL.M. in Intellectual Property Law from the Queen Mary University of London (QMUL).Disclaimer: The views or opinions expressed are solely of the author.