In 2016, Jaguar Land Rover (JLR) applied to the UK Intellectual Property Office (UKIPO) to register six UK trade marks consisting of 3D shapes of its iconic Land Rover Defender. The applications were opposed by INEOS, a UK multinational chemicals company which had recently branched out into the automotive sector, on the basis that, amongst other things, JLR’s marks lacked distinctiveness and were filed in bad faith.
A trade mark provides an indication of the origin of a product and common examples of registrable trade marks include brand names (i.e. LAND ROVER) and logos. Less commonly registered are shapes of goods or their packaging (i.e. the shape of a Coca Cola bottle). The fact that shape marks are less commonly registered is reflective of the fact they are rarely deemed to serve as a badge of origin for the right holder’s goods.
Accordingly, the IPO rejected JLR’s application on the basis that the shapes they sought to protect were devoid of distinctive character. JLR appealed this decision and the High Court recently dismissed the appeal, upholding the UKIPO’s finding that, whilst the shape might be iconic to car enthusiasts, it “may be unimportant, or may not even register, with average consumers”. The High Court therefore found that JLR’s 3D shapes had not acquired distinctiveness and did not indicate their origin.
Also key to the High Court’s decision was that other manufacturers had sold similar vehicles in the UK without causing confusing (i.e. Mercedes-Benz’s G-Class and Suzuki’s Jimny). This decision allows INEOS to press ahead with the production of its maiden off-road utility vehicle, the Grenadier.
Why is this important?
The High Court’s decision to dismiss JLR’s appeal illustrates that, no matter how iconic a shape might be, one will likely meet many roadblocks in an attempt to register a 3D shape as a trade mark. This decision also further highlights the importance of design registration and reinforces the view that this is the most effective and straightforward means of protecting a 3D shape.