Defender or Pretender? 

Automotive team member, Rachel Havard considers the rise of the Ineos Grenadier and Jaguar Land Rover’s attempt to register their Defender shape as a UK trade mark


 

Ben Fogle in The Telegraph“It is said that for more than half the world’s population, the first car they remember having seen is a Land Rover Defender, so recognisable is it, from every angle (bonnet, tailgate, even the gear stick is distinctive)”.

 

Quentin Willson in The Mirror“the most recognised automotive silhouette on the planet”

 

Graham Hope in Auto Express“The original Mini apart, there’s arguably no other British car that is as instantly recognisable…”*

I have great sympathy with this.  From a very young age, I clearly remember the Land Rover my mother had with those fantastic bench seats that ran along the sides in the back, then the nutmeg brown Defender County in which my neighbours used to give me a lift to the school bus: it snowed deeper and harder in the ‘80s, but sadly we never got properly snowed in by those narrow country lanes when there was a good 4×4 at hand.  In 2015, I got to be Lara Croft, navigating a mud caked Defender through swamps and dense foliage on the amazing Jungle Track – part of the Land Rover Experience day at Jaguar Land Rover’s Lode Lane plant, where the Defender had been in continuous production since 1948.  You can drive one up two flights of concrete steps in reverse – who knew!?  And then, the last Defenders rolled off the production line the following year in early 2016.  The end of an era …

Enter stage right – Ineos.  As 2020’s Tour de France draws to a close, many will have been following the progress of 2019’s Team Ineos, who this year have become the Ineos Grenadiers, almost as if they were promoting something …  And didn’t they used to be Team Sky, of whom Jaguar Land Rover (JLR) were a major sponsor.  I see photographs of the team with a familiar shape in the background.  That’s a Land Rover Defender isn’t it?  Sadly not, it is an Ineos Grenadier.

Chemical company Ineos is headed by British billionaire, Sir Jim Ratcliffe, with the Grenadier to be the first car from its newly formed automotive division.  Whilst production is not expected to occur until 2021, with first cars to be with customers in 2022, promotion of the Grenadier is ramping up significantly.

 

Defending the Defender

Meanwhile, JLR have not been idle in trying to defend their original Defender.

*The quotes at the beginning of this article are from some of the evidence submitted by JLR in proceedings before the UK Intellectual Property Office (UK IPO) concerning the shape of the Defender as a trade mark.

Unlike patents and designs, which confer a time-limited monopoly, the protection conferred by a trade mark registration could potentially be enjoyed to perpetuity, provided that the trade mark owner continues to renew its registration, does not allow the “mark” to become generic, and does not fail to put the mark to genuine use after registration has been secured.

As UK trade mark registration allows for protection not just of traditional branding, such as company names, words and logos, but also for less obvious “marks” such as colours, sounds and shapes, JLR chose to seek trade mark protection for the Defender shapes.  UK trade mark registration of these shapes, if successful, would have given them a basis for challenge to Ineos’ adoption of the Grenadier shape, as one arguably likely to be confused with JLR’s shape marks.

JLR filed UK trade mark applications to register the shapes of the Land Rover Defender 90 and Land Rover Defender 110 as three dimensional “marks” for a variety of goods and services, but particularly for vehicles in class 12.  Below are the representations of the shape of the short wheel base Defender as contained in one of these trade mark applications:

 

 

The UK IPO accepted these trade mark applications, on the basis of evidence submitted by JLR that the marks had become distinctive of JLR as a result of use made of them.

Ineos then opposed registration of the marks, based on a number of grounds, including that the marks were incapable of distinguishing one trader’s goods from those of another and that they lacked distinctive character.  The UK IPO’s hearing officer, deciding in Ineos’ favour, did not consider JLR’s marks to be inherently distinctive and further held that they had not been proven to have acquired the requisite distinctive character through use.

JLR appealed to the UK High Court, who upheld the hearing officer’s view that JLR’s marks did not significantly depart from shapes used in the passenger car market and so were not distinctive, and it was also upheld that the marks had not acquired distinctiveness.  Key for JLR was the need to show that a significant proportion of the relevant average consumers would perceive their shape marks on their own, without any additional indications, as distinguishing their vehicles from those of other manufacturers.

It was noted in the UK IPO proceedings that consumers might be drawn to cars they like the look of and would come to recognise the shapes of popular vehicles, but when making decisions on whether or not to buy them, they would distinguish these products by their manufacturer and/or model names such as, here, LAND ROVER and/or DEFENDER.

The High Court “accept[ed] Ineos’ submissions that the Hearing Officer conducted a thorough assessment of “JLR’s case based on the scale, length and nature of its use and promotion of the shapes of the Defender models [and] statements made by those connected to the trade” …and that it was open to him to find as he did that the case advanced by JLR in relation to these matters was insufficient to show that the Marks had acquired distinctiveness in the requisite trade mark sense i.e. that the mark should “distinguish the goods and services of one undertaking from those of other undertakings.””

With this battle won (at least for now), more is being seen of the Grenadier.  The automotive press observe how it is mainly Defender-influenced, but that it also draws from other 4x4s such as the Willy’s Jeep, Toyota Land Cruiser and Mercedes G-Class.  This might lend some credence to the UK IPO’s view, not disputed by the High Court, that JLR’s Defender shape did not significantly depart from shapes used in the passenger car market. However, a battle won does not necessarily win the war.  JLR have sought permission to appeal this High Court decision up to the Court of Appeal.  They have also sought to rely on fresh evidence on appeal.  It will be interesting to see what happens next.

 

The spirit lives on

Some might say that the spirit of the original Defender would be revived in the Grenadier; but for JLR, this iconic vehicle has also received a 2020 reboot under its long established DEFENDER 90 and DEFENDER 110 trade marks, but with increased comfort, in car technology, and even plug-in hybrid options.  With new innovation and design like this, JLR will have had the opportunity to consider other intellectual property options, such as patent and design protection for new features, whilst their trade marks and model names will continue to serve their essential function of distinguishing JLR’s vehicles from those of their competitors.  Just like the evolution of the equally iconic Mini, which retains its original character and identity but is a car for the here and now, the Defender too can live on, and with strong trade marks and branding, it could live forever.

 


If you would like to discuss this case, or any of the topics surrounding it, please contact the writer, or a member of our Trade Marks or Automotive Team.


Category: Latest Insights | Author: Rachel Havard | Published: | Read more

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