Land Rover defends the DEFENDER trade mark

There are few vehicles as iconic and instantly recognisable as the classic Land Rover. It has captivated car enthusiasts for decades, and has appeared in several mainstream action films such as The Expendables, Lara Croft: Tomb Raider, and in somewhat of a modified form in James Bond: Spectre. It is no coincidence that the vehicle has appeared in such films, as its heavy duty, military like structure gives an impression of assertiveness, functionality, efficiency and reliability.

To the dismay of many, Jaguar Land Rover discontinued production of the Land Rover Defender in January 2016. However, it did not discontinue the trade mark registrations which protects the model name. Instead, it is working on a replacement, although traditionalists are expressing doubts about whether it will be worthy of bearing the same name.

Jaguar had registered two trade marks for DEFENDER, these being a UK mark registered in 1989 for ''motor land vehicles and parts and fittings therefor; all included in class 12'' and an EU trade mark registered in 2014 for ''land vehicles; motor vehicles; motor land vehicles''.

A Canadian Company called Bombardier marketed a recreational off-road vehicle under the name ''Defender''. Jaguar alleged that this infringed their trade mark under Regulation 207/2009 art.9(2) of the Trade Marks Act 1994, on the basis that it would lead to a position of (1) double identity and (2) likelihood of confusion.

Bombardier only defended the former claim as they had no defence to the infringement action. They issued a counterclaim for partial revocation on the ground of non-use for five years under Section 46(1)(a) of the Trade Marks Act 1994.

They also argued that the trade mark was invalid under Regulation 207/2009 art.52(1)(b) and Section 47, as its scope contained too wide a specification of goods and services. The purpose of this argument was to establish that the trade mark had been registered in bad faith, a tactical move on Bombardier's part.

Issue 1 - Partial Revocation for Non-Use

Bombardier began by arguing that Jaguar Land Rover had only used the DEFENDER mark for part of the class in which it was registered, namely on the single Defender series only, despite being registered for ''Land Vehicles; Motor vehicles; motor land vehicles; parts and fittings for vehicles''.

However, the defendant could not attack the EU trade mark for non-use. It was filed in 2014 and the five-year period had not elapsed. The judge therefore did not consider the matter any further, as even if the UK trade mark were to be revoked the EU claim would still lie.

Issue 2 - The UK Act vs the EU Regulation - Partial Revocation on grounds of bad faith

Bombardier alleged that Jaguar Land Rover had made their application in bad faith, on the basis that they did not intend to use the mark DEFENDER for any other land or motor vehicle except to the models they had applied it to.

Unlike the domestic Trade Marks Act 1994 which requires an applicant for registration of a UK trade mark to make a declaration of use or intention under Section 32(2), the EU Regulation does not require that the applicant must be using or have a bona fide intention to use a trade mark. Therefore, invalidity on the grounds of bad faith could not be established in respect of the EU trade mark.

Nugee J clearly felt somewhat constrained as there was a conflict between the UK Act and the EU regulation. He referred to comments made by Jacob J, who in Laboratoire De La Mer Trade Marks [2005] EWCA Civ 978 said that ''there is simply no deterrent to applicants seeking very wide specifications of goods or services…with all the greater potential for conflict that may give rise to''. He then went on to say that it would be a strange position for somebody to be able to ''register a mark when he has no intention whatsoever of using it''.

However, Nugee J went on to say that because the matter was concerned with the Regulation, the Court was bound by it by virtue of Section 3(1) and Schedule 1 of the European Communities Act 1972 and Article 19(1) of the Treaty on the European Union.

Issue 3 - Was Jaguar in bad faith?

Nugee J analysed the legislation and the relevant authorities, and arrived at the conclusion that ''neither the Regulation nor the case law provides a basis that would enable the court to find that there is bad faith in view of the size of the list of goods and services in the application''. There, the partial revocation claim on the grounds of bad faith failed, affording no defence to the double identity infringement.

Issue 4 - Was the EU application made in bad faith?

Due to the ''expressions of disquiet'' of other judges, Nugee J then felt he had to consider what is exactly is meant by bad faith for the purposes of EU trade mark law, and particularly whether Jaguar was in bad faith in this respect.

In the case of Trillium (Case C000053447/1, March 28, 2000), the Cancellation Division helpfully defined bad faith for these purposes as ''the opposite of good faith''. Although that provides an inadequate consolation as to its meaning, they went further, explaining that it ''generally implies or involves, but is not limited to, actual or constructive fraud, or a design to mislead or deceive''.

Nugee J then went on to highlight the severity of a claim of bad faith and that the burden is on the defendant (the accuser) to prove it. Where a defendant seeks to establish that a claimant has acted in bad faith by applying for an unduly broad specification but is unable to establish a narrower specification which the claimant should have registered, the accusation will be ''manifestly unsustainable''. Despite attempts to do so, Bombardier could not establish a narrower specification, and as a result their claim failed.

Jaguar Land Rover Ltd v Bombardier Recreational Products Inc [2016] EWHC B37 (Ch) (08 November 2016)

Book review: Trade Mark Registrations in Bad Faith by Alexander Tsoutsanis

The law on this topic is surprisingly diverse, even between the UK and the Community trade mark system, and indeed expressed in diverse ways. When applying for a UK trade mark you have to declare that you are using or have a bona fide intention of using the trade mark: there's no such requirement in the Community system. The subject of the work is the requirement - common to the UK and the CTM system - is that a trade mark can be invalidated if it were applied for in bad faith.

This book is a handsome hardback production, as one would expect from OUP. It's 424 pages long, including preliminaries and index, with none of the flab - regurgitated legislation - that one often finds bulking out legal texts. Its scope is not world-wide, though, which isn't clear from the title - it covers the Community trade mark system and the laws of several Member States (including the UK), the country chapters varying greatly - 15 pages on the UK, 17 on Germany, one on Portugal. The CTM regulation gets 55.

Considering its origin as Dr Tsoutsanis's thesis (defended in 2005, which perhaps partly explains why the new EU Member States are dealt with quite briefly) this is far from being a dry, unreadable exposition. The author, who is an Associate with Klos Morel Vos & Schaap in Amsterdam and a lecturer at the University of Leiden, has brought the work up-to-date although to what date is not stated. It was published on 11 November last year, and presumably it took a while to get into print after he finished writing.

On the other hand, having begun life as a thesis it naturally contains everything that the world's greatest enthusiast for the subject thought worth including. That's not intended remotely as a criticism - more like a reflection of my own experience of preparing a doctoral thesis - but it does mean that there is probably more in this work than you'd ever need in practice, more probably than an academic researcher might need either. But if we only ever bought law books that we knew would be 100 per cent, or even a lesser percentage, useful, we would buy very few: and how can we know what we are going to need before something lands on our desks? For the practitioner, I guess the point is that the country chapters about those jurisdictions about which to give advice would cause our PI insurers sleepless nights are for interest only, but the UK and CTM chapters are sufficiently valuable to make this a useful addition to any practitioner's library.

Further details are on the publisher's website here.