Jaguar Land Rover lost a lawsuit in the UK regarding its attempt to register the following 3D trademarks in class 12 for its off-read vehicle models Land Rover Series 1, Series 2, Defender 90 and Defender 110:
Although the UKIPO allowed these application initially, there was an opposition by Ineos Industries after that on the following grounds:
- the shapes were not capable of being registered;
- lack of inherent distinctiveness/descriptive in nature;
- the shapes had become customary in the established practice of trade of the goods;
- the shapes resulted from the nature of the goods themselves and/or are necessary to achieve a technical result and/or give substantial value to the goods themselves;
- registration would be contrary to public policy; and
- that the applications were filed in bad faith.
The UKIPO decided that these 3D forms cannot constitute trademarks. The arguments for this position were:
- The vehicle models as depicted lack of distinctive character. Although some of their element can be perceived as unique compared with other similar models, as a whole the design of the cars are classic one for off-read vehicles. The ordinary consumer will not identified them as separate trademarks.
- The submitted evidence for acquired distinctiveness is not sufficient to prove that consumers perceive these 3D forms as a source of trade origin apart from the word marks Land Rover and Defender.
- According to the Office it is possible these applications to being filed in bad fight. It is obvious that their purpose is to monopolies these particular classic car designs, they will not be used for other products.
The Court upheld the UKIPO’s position. The 3D trademark applications at hand lack of distinctive character and cannot constitute s source of trade origin.
Source: Automotive News Europe.