Trade Marks: Jaguar Land Rover v Twisted

Land Rover Defender
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Jane Lambert

Chancery Division (Mrs Justice Rose) Jaguar Land Rover Ltd, v Twisted Automotive Ltd, [2018] EWHC 3536 (Ch)

This was an appeal by Jaguar Land Rover Ltd. against Louise White's decision in Re LR, Twisted Automotive Lt.d. v Jaguar Land Rover Ltd. BL O/289/18  15 May 2018 to refuse that company's application to register the letters "LR" as a trade mark for various goods in class 12.  The application was filed on 23 Aug 2016 under trade mark number UK3191949.

The Opposition
By that application Jaguar Land Rover. applied to register those Letters for the following goods:

"Motor land vehicles; parts and fittings for vehicles; engines for motor land vehicles; wheels for vehicles; alloy wheels; wheel trims; wheel rims; hub caps for wheels; hub centre caps; wheel covers; wheel sprockets; arm rests for vehicle seats; luggage bags specially adapted for fitting in the boot of vehicles; car interior organizer bags, nets and trays specially adapted for fitting in vehicles; head-rests for vehicle seats; vehicle head rest covers; wing mirror protective and vanity covers; car seat covers; covers for vehicle steering wheels; fitted covers for vehicles; spoilers for vehicles; covers for vehicles; seats for vehicles; safety harnesses for vehicles; radiator grilles for vehicles; trim panels for vehicle bodies; bicycles; non-motorised scooters; parts, fittings and accessories for bicycles or scooters; strollers and prams, and their parts and accessories; baby, infant and child seats for vehicles."

The application was partially opposed by Twisted Automotive Ltd. under s.5 (4) of the Trade Marks Act 1994.  After a contested hearing, Mrs White upheld the opposition in respect of the goods to which there was an objection and allowed the mark to proceed to grant in respect of the other goods.

The Appeal
Twisted relied upon s.5 (4) (a) of the Act:

"A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented-
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met,
......................................
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark."

S.5 (4A ) adds:

"The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application."

Twisted claimed an "earlier right" within the meaning of that subsection on the ground that it had sold, serviced and repaired Land Rover Defenders under the appellation "L R Motors" before Jaguar Land Rover filed its application.   Twisted had built a substantial business around its premises in Thirsk and over the internet.  It claimed that it was well known to Defender owners and enthusiasts throughout the country and that the public and trade associated the "LR Motors" sign in relation to Defender parts with its business and with none other.

The hearing officer referred to Judge Melissa Clarke's judgment in Jadebay Ltd and others  v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC) (13 June 2017) and concluded at paragraph [20] pf her decision:

"In these proceedings, it is noted that the applicant is a hugely successful car manufacturer. Its trade mark application, the subject of these proceedings, is LR. The earlier sign relied upon is LR Motors, motors being descriptive or otherwise very weak for the field of activity in question. It is considered that these signs are self-evidently highly similar. Further, the earlier goodwill is in respect of retail services for the very goods applied for in the subject trade mark application. At the hearing Ms Wakerley emphatically argued that there would be no misrepresentation. This is because, according to Ms Wakerley, her client is a manufacturer of motor vehicles (and associated parts) and the earlier business is in respect of retailing of motor vehicles (and parts). Her submission is that there is a sufficient gap between these activities to ensure no misrepresentation occurs. I cannot agree with this argument and in the absence of any evidence to the contrary, it is considered that the respective fields of activity between the parties can and do overlap. I also take note of the success of the applicant’s business and consider the facts to be analogous to those in the Chelsea Man decision referred to above. Though the goodwill of the opponent here is more modest, it is not trivial and is not limited to a solitary location. The evidence demonstrates that it has an internet presence and customers in various locations around the United Kingdom. It is considered therefore that the conclusion reached in the aforementioned Chelsea Man decision can equally apply here. In these proceedings, the applicant is a global entity with the clear means to locate its business on a nationwide basis. It is not unreasonable to envisage a scenario whereby the applicant locates in a position local to the opponent. In such a circumstance, bearing in mind the closeness of the signs and the relative closeness of the fields of activity, I conclude that customers of the opponent, upon seeing the goods of the applicant, will be misled. As such, misrepresentation is made out."

Jaguar Land Rover appealed against the finding of misrepresentation. It submitted that the initials "LR" referred to Land Rover and that the public would understand that any goods supplied under the "LR" mark originate from Land Rover.   Any goodwill that Twisted had acquired in the "LR" sign related only to retailing, repairing and servicing Land Rover vehicles.

The Judgment
The appeal came on before Mrs Justice Rose.  Her ladyship directed herself that Mr Justice Arnold had set out the correct approach to appeals from the Registrar in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch):

"i) It is only in a rare case that the appellate court should overturn conclusions of primary fact.
ii) Where the decision is a multifactorial assessment or evaluation, the court should show a real reluctance to interfere in the absence of a distinct and material error of principle.
iii) It is not necessary for the degree of error to be something that is clearly or plainly wrong but mere doubt about the decision will not suffice to warrant appellate interference.
iv) In evaluating the evidence, the appellate body is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account."

The learned judge was not persuaded that the hearing officer had erred.   Her ladyship said at paragraph [14] of her judgment:

"In my judgment Jaguar has not shown that Ms White went wrong in any way in her assessment of this opposition and certainly have not shown that she went wrong to the degree that would entitle this court to interfere with her decision. I agree with Ms McFarland's submissions on behalf of Twisted that the underlying assumption on which Jaguar's challenge rests, namely that everyone realises that the initials "LR" in "LR Motors" refer to Land Rover, is simply an assertion by Jaguar with no evidence to support it. The undisputed evidence was that Jaguar Land Rover has never used the initials "LR" as a sign for its goods in this country. Jaguar stated at the hearing that it was not putting forward any use of "LR" prior to the application for registration in support of its application. I accept that this was primarily relevant to the question of the date of assessment but it also confirms the conclusion that there is no basis for saying that customers of LR Motors would realise that the initials "LR", if used by Land Rover, refer only to Jaguar Land Rover and are not connected with LR Motors."

In the next paragraph, the judge considered the nature of Twisted's goodwill and the possible effect on its reputation of the appeal were to be allowed:

"As an independent retailer he believes the business can offer a more personalised service and supply products at a better price than Jaguar. If customers are under the impression that his showroom and other sales sites are part of Jaguar, they may think that the goods will be more expensive as a result. He describes his business' ethos as about building long-term relationships with customers and not being driven solely by making a sale on the day that the customer first visits the showroom."

For those reasons, Mrs Justice Rose dismissed Jaguar Land Rover's appeal.

Comment
This case is unusual in that the mark that a retailer claimed for itself was an abbreviation of the name of the name of the manufacturer of the goods that it supplied.  At first blush, there seems to be considerable force in Jaguar Land Rover's argument that "LR" can refer only to Land Rover and that the public and trade already regard goods sold under the "LR" sign as goods that must originate from Land Rover and that any goodwill subsisting in that mark that related to Twisted's business would b confined to the services that that company offers. The judge appears to have rejected that argument on the ground that there was no evidence that the purchasing public associated the initials "LR" with Land Rover but Twisted is a business that deals in Land Rovers and Land Rover parts.  However, the question has to be asked: what evidence, could possibly be needed to prove the obvious?  Having said that, the bar to an appeal court's interference is set pretty high by the Apple case and "mere doubt" will not suffice.

Further Discussion
Anyone wishing to discuss this case or trade marks generally should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Comments

Peter Groves said…
You ask "what evidence, could possibly be needed to prove the obvious?", but I am not sure what you think is obvious. That "LR" denotes Land-Rover? In that case, please let me say that I think there is a distinction to be drawn in the motor trade (and other fields too, I am sure) between consumers who are well-informed enthusiasts and those who are not. The case concerned Land-Rover's Defender model, so we can exclude from consideration owners of Freelanders, Discoveries and Range Rovers who are often not the sort of owner you would call an enthusiast (though many are). No-one chooses to drive a Defender unless they are really committed to it. It does a particular job very well, but if you don't need that particular job doing there is surely no reason to drive one.
Such an owner will, to my mind, be very well able to recognise that the trade mark owner's business is not the manufacturer's. They will, I suspect, be well aware of the important distinctions in the motor trade between authorised retailers and repairers and independent ones. They will understand that the independent sector offers generally lower prices, while the authorised network will have other advantages. Their vehicles will by definition be getting on a bit, as it is nearly three years since production stopped (leaving aside a 70th anniversary limited edition with a production run of only 150) so they will be less inclined to have recourse to the authorised network, preferring to keep their vehicles going at more economical rates. Were this case about a volume car marque, and the customers not so likely to be petrolheads, the situation might be different, but to view the car market as a single entity is too narrow a view.

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