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They think it’s all R(over). It is now! The viability of 3D trade marks

They think it’s all R(over). It is now! The viability of 3D trade marks

19th August 2020 - Published by Humna Nadim

When reviewing with clients how to protect their brand and products, we will always – where relevant – consider the possibility of protecting the 3D shape of goods by registering them as a trade mark.

Can you register a 3D shape as a trade mark?

Here, our team of intellectual property solicitors discuss the recent High Court decision in the case of Jaguar Land Rover Limited v Ineos Industries Holdings Limited [2020] EWHC 2130 (Ch), which may now influence the advice that you are given.

The Hearing at the High Court in March 2020 was an appeal by Jaguar Land Rover Limited (JLR) of the Intellectual Property Office’s (IPO) decision in respect of the registrations sought by JLR for the shapes of its Land Rover Defender 90 and Land Rover Defender 110 4x4s. The applications were opposed by Ineos Industries Holdings Limited.

The decision of the Hearing Officer was that the shapes of the Land Rover Defender 90 and Land Rover Defender 110 lacked any inherent distinctiveness, the shapes had not acquired any such distinctiveness over time, and that the applications were made in bad faith in relation to vehicles other than 4x4x motor vehicles.

By possessing the trade mark registrations, JLR would have a monopoly over the shape of the vehicles. It is therefore unsurprising that JLR appealed the IPO’s decision; the appeal was before HHJ Melissa Clarke and the Judgment was given on 3 August 2020.

The Court found that the Hearing Officer at the IPO had been correct in adopting the approach in London Taxi Corporation Limited v Frazer-Nash Research Limited and another [2017] EWCA 1729 (Civ) and finding that the designs did not depart significantly from other passenger cars. Further, the Hearing Officer had been correct to consider the differences in designs highlighted by expert evidence submitted by JLR and to conclude that these “differences” were unimportant to average consumers.

On the point of distinctiveness in the shapes of the cars, the Court considered that the Hearing Officer had correctly applied the test from Windsurfing Chiemsee C-108 & C-109/97, and that the Hearing Officer was not bound to accept the expert’s view of survey evidence and was able to make an overall assessment on the evidence before him.

On the basis set out above, the IPO’s decision was upheld and the shapes of the Land Rover Defender 90 and Land Rover Defender 110 did not proceed to registration.

This decision follows the trends which we have seen in the English Courts and at the IPO with the difficulties encountered when attempting to register a trade mark for a shape. The hurdles which seem difficult for registrants to overcome are those of distinctiveness of the shape for which a registration is sought and the ability to demonstrate that consumers rely on this shape as a badge of origin.

Get in touch with an intellectual property solicitor in Manchester

If you are in a position where you are reviewing your company’s intellectual property protection and would like to discuss how the above Judgment impacts you, please don’t hesitate to get in touch with Humna Nadim on 0161 838 8163 or email humnanadim@kuits.com.

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