Jaguar Land Rover’s appeal to protect certain models of the Land Rover Defender has been dismissed. The High Court upheld a decision to refuse Land Rover’s applications to register as trade marks the shapes of the Land Rover Defender 90 and the Land Rover Defender 110 for the majority of goods and services sought on the basis that they lacked distinctiveness.

Inherent distinctiveness:  The assessment to be carried out is summarised in London Taxi [2017] EWCA Civ 1729, which confirms that:

• inherent distinctiveness is to be assessed from the perspective of the average consumer – a degree of caution therefore needs to be exercised when deciding how much weight to give to the evidence of designs experts;
• reducing a shape mark to written descriptions of its constituent features may not capture how those features are arranged and configured;
• ultimately what matters is whether the shapes, as wholes, depart significantly from the norms and customs of the sector – the presence of one or more features which are unique to the shapes at issue, or are at least unusual in the sector concerned, does not automatically fulfil this requirement.

The appeal court accepted that the hearing officer had considered the competing evidence on the features of the shapes, their technical functions and how they differed from the norms of the sector in reaching his decision that the shape as a whole did not depart significantly from the norms and customs of the sector concerned i.e., passenger vehicles generally, not four-by-fours specifically.  The conclusion that the arrow shot rear windows and alpine side windows amounted to minor variations could not be said to be wrong, particularly given the level of generality required for the assessment.  Nor was the hearing officer wrong in declining to give significant weight to statements made by motoring specialists and Defender afficionados when considering distinctiveness through the eyes of the average consumer of passenger cars.

Acquired Distinctiveness:  In order to demonstrate that the marks had acquired distinctiveness, JLR needed to show that a significant portion of relevant average consumers would perceive the marks alone as acting as a badge of origin i.e., as indicating that the goods originated from JLR.  JLR relied on expert evidence and survey evidence.  The High Court considered that the hearing officer had conducted a thorough assessment of JLR’s case based on the scale, length, nature of its use and promotion of the shapes and had made the necessary global assessment.  JLR’s arguments that the hearing officer had taken an unduly negative view of the survey evidence (having considered other factors first) and had been wrong to make his own conclusions on that evidence (rather than automatically accepting the evidence of JLR’s expert) were rejected.

As noted in the judgment, the appeal court is not required to consider whether another hearing officer may have come to a different conclusion.  Rather it was JLR that had to show that either the hearing officer had made a material error of principle or that his finding was clearly wrong.

The decision provides a useful reminder of the requirements of inherent distinctiveness and acquired distinctiveness, the pitfalls that brand owners can face in seeking to register shape marks, as well as the relatively high hurdle that brand owners face in successfully challenging decisions of hearing officers of the UK Intellectual Property Office.

Case citation: Jaguar Land Rover Limited v Ineos Industries Holdings Limited [2020] EWHC 2130 (Ch)