A recent decision in favour of premium car maker, Jaguar Land Rover, demonstrates the effectiveness of the EU-wide trade mark, and highlights the efficient procedures available under the pilot Shorter Trials Scheme in the London High Court. Jaguar Land Rover sued for infringement of EU and UK registrations protecting its iconic “Defender” trade mark, it launched an application for summary judgment and achieved a win within five months.
Canadian company, Bombardier Recreational Products Inc. (BRP), launched a range of off-road recreational vehicles in the UK and Europe under the name “Defender” in early 2016. In June 2016 Jaguar Land Rover sued for infringement of both a long-standing UK and a more recent EU registration of the “Defender” name, making use of a new streamlined court procedure currently being piloted as an option for efficient resolution of business disputes.
In response, BRP attacked the validity of Jaguar Land Rover's trade mark registrations, saying that Jaguar Land Rover had no intention of using the mark for the whole range of goods covered. BRP said that the EU mark had been applied for in bad faith because Jaguar Land Rover had no intention to use it for every type of product within the specified range at the time of registration.
This argument failed – EU law did not support a bad faith attack simply on the basis of the goods specified in the trade mark registration without a dishonest intention or unethical behaviour. No such sharp practice had been shown here.
BRP's use of the “Defender” name infringed Jaguar Land Rover's trade mark and would have to be completely removed from products and marketing materials across the EU.
Mills & Reeve acted for JLR. Intellectual property litigation specialist Claire O'Brien said:
“The decision is an important win for Jaguar Land Rover. The case is also notable as one of the first few intellectual property cases to be issued in the Shorter Trials Scheme, which really proved itself here.”
Jaguar Land Rover's Global Legal Director - Keith Benjamin - said:
“We welcome this ruling, recognising the enforceability of our intellectual property rights and preventing use by third parties.
The Land Rover Defender is an iconic vehicle that is part of Jaguar Land Rover's past, present and future. The success of our business is based on unique design and engineering attributes, and we intend to protect the brand robustly around the world.”