Put Away Your 3D Glasses! Jaguar Land Rover 3D Trademark application denied

October 2, 2020

2 min read

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What's going on here?

What do Kit-Kats, Rubik’s Cubes and Land Rovers have in common? Well after a recent UK High Court decision, all have been denied 3D trademark registration!

What does this mean?

In May and April of 2016 Jaguar Land Rover (JLR) sought to register six 3D trademarks for Land Rover Defender models in a variety of product classes including toys, vehicles, and repair/servicing. In October 2019 Ineos, a company that manufactures cars among other things, challenged this application with the UK Intellectual Property Office (IPO) with the Hearing Officer finding in favour of Ineos and denying JLR’s application. JLR sought to appeal this decision with the UK High Court on the grounds that the Hearing Officer had not correctly applied the test for acquired and inherent distinctiveness.

High Court Judge Melissa Clarke first dealt with the test for inherent distinctiveness which requires that the 3D mark departs significantly from the norms and customs of the sector concerned by the average consumer, which using the case of London Taxi was found to be passenger cars. In short, the judge found that they were not entitled to disagree with the Hearing Officer unless there had been a material error in law or their findings. The Hearing Officer’s findings that whilst certain features may be important differences in the eyes of JLR’s design expert, they wouldn’t be noticeable to the average consumer were therefore confirmed.

In the hearing JLR sought to argue they had acquired distinctiveness via “a significant proportion of relevant average consumers perceiving the shapes applied for…as distinguishing goods placed on the market by JLR”. They argued this by means of a survey, but the Hearing Officer and High Court continued the trend of interpreting survey evidence strictly and dismissed the claim.

What's the big picture effect?

Trademarks are one of the most valuable assets a company can have. They draw customers in, allow these customers to build up goodwill in a certain product and can become culturally significant (see notable examples such as Coca Cola). Perhaps even more importantly for companies though, trademark protection can be renewed every 10 years in perpetuity. For commercial enterprises this form of protection is far more certain and protectable than other IP rights such as patents or copyrights. Therefore, courts are aware of the risk of companies attempting to file for trademark registration, particularly in the class of 3D trademarks, when the mark is functional or indistinct. This, if allowed, would let a company create a monopoly on a certain product forever.

However, for manufacturers of goods there is a need to protect their goods where these goods have an acquired or inherent level of distinctiveness that provides these goods with a badge of origin. Yet, as many note, the current high standard required to register 3D marks is not unreasonable when considering the fact that these ‘trademarks’ are often protectable via other IP rights that have a shorter lifespan, thus allowing for free market competition.

This specific case doesn’t divert from the previous case law on the subject, but instead seems to support the generally accepted idea that 3D trademarks have a very high bar for registration.

Report written by Hari Majumdar

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