United Kingdom: Defender blocks off-roader

January 27, 2017

Immortalised as a perennial icon of the motoring industry and a prime example of British engineering at its finest, production of the Land Rover Defender finally came to an end in January 2016. Spanning almost 70 years, the Defender had been the longest-running production car in existence.

While Jaguar Land Rover (JLR) make strides toward the production of a new generation of the Defender, the iconic name still surfaces among those who remember it fondly, and was also the subject of a recent trade mark dispute.

The model is protected in the UK by two trade marks for Defender:

a 1989 UK mark for "motor land vehicles and parts and fittings therefor; all included in class 12" and;
a 2014 European Union trade mark (EUTM) for "land vehicles; motor vehicles; motor land vehicles".

JLR recently sued Canadian firm Bombardier Recreational Products (BRP) over the naming of its product, the Can-Am Defender – marketed as a "fun, recreational off-roader" said to be "...capable of 'work horse' agricultural and estate applications such as towing and carrying". BRP was accused of infringement corresponding to claims of double identity and likelihood of confusion.

In defence, BRP provided grounds for partial revocation of both the UK mark and the EUTM, arguing that the marks were secured in "bad faith". Support for this argument was provided in that Defender has not been used on any other (type of) land vehicle, motor vehicle, motor land vehicle or in relation to any parts or fittings for any other motor land vehicle. It was argued that this was the intention upon specification of a broad set of goods and services for the marks.

While this has basis in UK trade mark law, there is no such stipulation in the European Union Trade Mark Regulation. The judge, Mr Justice Nugee, considered a prior General Court decision as binding on the English High Court by virtue of aspects of European Community Law and the Treaty on the European Union. The prior decision was summarised as "a decision in principle that the law does not provide a basis to find that the size of the list of goods and services amounts to bad faith".

It is interesting that this EUTM matter was presided over in the English High Court. The judge summed up: "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."

The judge further summarised that the defendant sought to allege an overly broad specification, without successfully identifying any narrower specification that the claimant should instead have applied for. The only suggestion put forth by the defendant was seemingly unsustainable.

There was an acceptance by BRP that there could be no defence against the double identity claim without the partial revocation of the JLR marks.

This case breaks new ground in suggesting that it may indeed be possible to argue bad faith before both UK and EU courts, in particular relating to an overly broad specification. The case does however make it clear that success will rely on the defendant providing the correct supporting facts and suggesting a realistic alternative specification.

In the case of both parties, the decision provides a timely reminder of the vital importance of a well written specification of goods and services.