Trade Marks - Jaguar Land Rover Ltd. v Ineos Industries Holdings Ltd.

Jane Lambert

Chancery Division (HH Judge Melissa Clarke) Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd [2020] EWHC 2130 (Ch) (3 Aug 2020)

On 11 April 2016, Jaguar Landrover Ltd. ("JLR") applied to register the shapes of the Land Rover Defender 90 and Land Rover Defender 110 motor vehicles, in each case with and without rear-mounted spare wheels ("the Marks") and the shapes of the Defender 90 and 110 with spare wheels, in classes 9, 12, 14, 28 and 37.  On 12 May 2016, that company applied to register the shapes of the Defender 90 and 110 without spare wheels.

Unlike registered designs, design rights and copyrights, trade marks can be renewed indefinitely. It is not easy to register the shape of a product because there are restrictions on the registrations of signs that consist exclusively of indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of a rendering of services, or other characteristics of goods or services, But if they can be registered they are as almost as good as perpetual copyrights and design rights.  The explains why taxi cab makers, confectioners and many other businesses seek to register the shape of their products.

Those applications were opposed by Ineos Industries Holdings Ltd. ("Ineos") under ss.1 (1), 3 (1) (a) to (d), 3 (2) (a) to (c), 3 (3) (a) and 3 (6) of the Trade Marks Act 1994.  Ineos had offered to buy the tooling and production equipment for the Defender after Land Rover had ceased to manufacture it but JLR broke off the negotiations after a few months and warned that company that it would regard any production of the vehicle without JLR's licence as an infringement of the company's IP rights and an act of passing off.

The opposition was heard by Mr Allan James on behalf of the Registrar on 17 June 2019. By his decision dated 3 Oct 2019, Mr James rejected JLR's applications except for certain goods and services in classes 9, 14 and 28 (see Re Trade Mark Applications  3164282/83, 3186701, 3158947/8 and 3248751 Ineos Holdings Ltd. v Jaguar Land Rover Ltd. BL O/589/19 3 Oct 2019).  JLR appealed to the court on the grounds that:

"i) the Hearing Officer did not apply the test of whether the Marks "depart significantly from the norms and customs of the sector" correctly. Had he done so, he would have found that the Marks were inherently distinctive; and
ii) the Hearing Officer correctly cited the test for acquired distinctiveness from Windsurfing Chiemsee C-108 & C-109/97 but did not apply it properly or completely. Had he done so, he would have concluded that the Marks had acquired distinctiveness."

There had also been a cross-appeal from Ineos on the grounds that the Hearing Officer's findings of bad faith in respect of the applications for 'vehicles which travelled by air and/or water' should have caused him to refuse the applications in their entirety but Ineos withdrew that cross-appeal in the light of the Court of Justice of the European Union's decision in C‑371/18, Sky Plc and others v SkyKick UK Ltd and another  [2020] EUECJ C-371/18, [2020] WLR(D) 54, ECLI:EU:C:2020:45, EU:C:2020:45.  The appeal was heard by Judge Melissa Clarke on 4 March 2020 who delivered her judgment in  Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd [2020] EWHC 2130 (Ch) on 3 Aug 2020.

As to the first ground of appeal, JLR submitted that Mr James had been wrong to reject the evidence of Prof Mays, its expert in vehicle design.  He had erred in regarding the arrow shot and alpine windows in the Land Rover as only minor variations from the norm when in fact they were "unusual if not unique".  He should have taken into account the views of motoring journalists on the vehicle's design features. 

Before considering those submissions, the learned judge reminded herself of paragraph [18] of Mr Justice Newey's judgment in The Royal Mint Ltd v The Commonwealth Mint And Philatelic Bureau Ltd [2017] EWHC 417 (Ch) (3 March 2017) which were themselves derived from Mr Daniel Alexander QC's observations in Talk for Writing Trade Mark (O/017/17, 19 Jan 2017):

"Drawing these threads together, so far as relevant for the present case, the principles can therefore be summarized as follows.
(i) Appeals to the Appointed Person are limited to a review of the decision of Registrar (CPR 52.11). The Appointed Person will overturn a decision of the Registrar if, but only if, it is wrong (Patents Act 1977, CPR 52.11).
(ii) The approach required depends on the nature of decision in question (REEF). There is spectrum of appropriate respect for the Registrar's determination depending on the nature of the decision. At one end of the spectrum are decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions. Further along the spectrum are multi-factorial decisions often dependent on inferences and an analysis of documentary material (REEF, DuPont).
(iii) In the case of conclusions on primary facts it is only in a rare case, such as where that conclusion was one for which there was no evidence in support, which was based on a misunderstanding of the evidence, or which no reasonable judge could have reached, that the Appointed Person should interfere with it (Re: B and others).
(iv) In the case of a multifactorial assessment or evaluation, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions. In particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the appellate court would have made in a situation where reasonable people may differ as to the outcome of such a multifactorial evaluation (REEF, BUD, Fine & Country and others).
(v) Situations where the Registrar's decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong. It is not necessary for the degree of error to be "clearly" or "plainly" wrong to warrant appellate interference but mere doubt about the decision will not suffice. However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar's decision was wrong, should the appeal be allowed (Re: B).
(vi) The Appointed Person should not treat a decision as containing an error of principle simply because of a belief that the decision could have been better expressed. Appellate courts should not rush to find misdirections warranting reversal simply because they might have reached a different conclusion on the facts or expressed themselves differently. Moreover, in evaluating the evidence the Appointed Person is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account. (REEF, Henderson and others).
Bearing in mind the repeated reminders that different points are likely to be particularly relevant in other cases, this is not intended to be a summary of universal application for other cases where particular aspects of the approach may require different emphasis."

In particular, she reminded herself at [24]:

"that the Court 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 so as to oblige the Court to substitute its own view, notwithstanding the experience of the Hearing Officer and the nature of the exercise carried out by him. Situations where a hearing officer's decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong, and (c) where the view expressed by the hearing officer is one about which the Court is doubtful but, on balance, concludes was wrong."

The judge agreed with Ineos's submission that Prof Mays was an expert in car design but not in the average consumer's perception of car design. The hearing officer had expressed the view that differences in design that appear important to design specialists may be unimportant, or may not even register, with average consumers of passenger cars.  The hearing officer had no doubt formed that view through his experience of hearing trade mark cases.  That was sufficient justification for rejecting the professor's evidence on the significance of the Land Rover's design features.

The same was also true with the reviews of journalists.   She said at [28]:

"Some of them are obviously hyperbolic. In those circumstances, I cannot find that the Hearing Officer was wrong to find that "these observations depend, at least in part, on the writers' familiarity with the shapes(s) because of their long use in trade" nor to decline to place significant weight on the distinctiveness of the shape to such motoring specialists/ long-term owners/ Defender aficionados when considering distinctiveness through the eyes of the average consumer of passenger cars."

As for the submission that Mr James had erred in regarding the arrow shot and alpine windows in the Land Rover as only minor variations from the norm, the learned judge said that he had carried out a careful and detailed assessment of the expert evidence and other evidence in respect of the variants relied on by JLR.   His analysis was quite in keeping with the Court of Appeal's judgment in  The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and Another [2017] EWCA Civ 1729 (1 Nov 2017) which I blogged in "Is the shape of a London taxi a valid registered trade mark?" The London Taxi Corporation v Frazer Nash Research 3 Nov 2017.   He had reached his conclusion after hearing detailed submissions from each side as well as reading reply evidence from each side and after undertaking the sort of multifactorial assessment with which the court should be reluctant to interfere.  The judge could find no error of principle or ground for interfering with Mr James's finding.

Turning to the second ground, Her Honour noted that at [33] that JLR had three criticisms of the hearing officer's application of the test for acquired distinctiveness:

"i) The manner in which he approached the assessment of the distinctive character of the Marks, by failing to carry out an overall assessment;
ii) His treatment of the survey evidence; and
iii) The manner in which he approached the evidence of Defenders modified and sold by third party modifiers ('modifiers')"

She addressed the first and second criticisms together.   JLR had attacked the methodology of considering the survey evidence separately from the other evidence.   It complained that he had prejudged the outcome and that he was wrong not to have accepted at face value the conclusions of the analyst who had set up the market survey.  In the judge's view, the hearing officer had evaluated the evidence on acquired distinctiveness in accordance with the Court of Justice's guidance in Joined Cases C-108/97 and C-109/97,  Windsurfing Chiemsee  [1999] EUECJ C-109/97, EU:C:1999:230, ECLI:EU:C:1999:230 and the Court of Appeal's in Societe Des Produits Nestle SA v Cadbury UK Ltd [2017] EWCA Civ 358 (17 May 2017).  She reminded herself that he would not have had to consider the survey evidence at all had he found evidence of acquired distinctiveness from the other materials. He seemed to have consulted that survey in order to see whether it bolstered JLR's case.   It indicated that he had approached his task with an open mind.

JLR contended that the modification and re-badging of Land Rover products by modifiers indicated that consumers recognized JLR's vehicles by their shape alone and that the hearing officer had misunderstood that contention.  The judge took the view that the consumers would be motivated by the value added by the modifier.   In Her Honour's words, they "buy a modified vehicle because they want a Defender, but better."  If the consumers simply wanted to buy a vehicle of a particular shape they would buy it directly from JLR.  In her judgment, the shape in issue is not operating as a guarantee of origin to those who purchase it.  It was possible that another hearing officer could have come to a different decision but that did not means that Mr James had been wrong.  Having found for Ineos on the second ground, Judge Melissa Clarke dismissed the appeal.

It should not be forgotten that s.1 (1) of the Trade Marks Act 1994 expressly contemplates the registration of the shape of goods or their packaging.  If a shape can serve the essential function of a mark which is the indication of origin and does not tend to restrict competition in the supply of the goods for which it was registered there is no reason why it should not be registered. Anyone wishing to discuss this article or the registration of shape marks may call me on 020 7404 5252 during office hours or send me a message through my message form.