Jaguar Land Rover Ltd v Twisted Automotive Ltd

On an appeal from a trade mark opposition, the appellate court should rarely disturb primary factual findings or multifactorial evaluations. Intervention requires a material error of principle; mere doubt is insufficient.

For the purposes of passing off, goodwill in an unregistered sign may extend beyond a single premises where the business has an internet presence and attracts customers nationally. A difference between manufacture and retail does not necessarily prevent an overlap in fields of activity. The absence of evidence of concurrent use, together with similarity of the signs and established goodwill, may support a finding of misrepresentation.

Jaguar appealed against the decision of the Registrar of Trade Marks, recorded as O-289-18, which upheld Twisted’s opposition to registration of the sign “LR” for various class 12 goods under section 5(4)(a) of the Trade Marks Act 1994.

Twisted relied on goodwill acquired through its LR Motors business, which sold used Land Rover Defender vehicles, parts and accessories and provided related services. Jaguar argued that “LR” would be understood as referring to Land Rover, that Twisted’s goodwill was geographically and commercially narrow, and that Jaguar manufactured goods whereas Twisted operated principally as a retailer.

The central issue was whether the Registrar had made an error of principle in finding that use of “LR” by Jaguar could amount to a misrepresentation causing damage.

1. The appeal was dismissed. Jaguar had not shown any error in the Registrar’s assessment, still less an error sufficient to justify appellate interference.
2. The applicable approach to appeals from the Registrar was that described in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch). Primary factual conclusions should rarely be overturned. Multifactorial evaluations should be approached with real reluctance to interfere absent a distinct and material error of principle. Mere doubt is insufficient, and the appellate court may assume that the Registrar considered the evidence unless there is good reason to think otherwise.
3. Jaguar’s submission depended on the assumption that customers would understand “LR” in LR Motors as referring only to Land Rover. The evidence did not establish that assumption. Jaguar had not used “LR” as a sign for its goods in the United Kingdom before the relevant date and had not relied on prior use in support of its application.
4. The distinction between manufacture and retail did not prevent an overlap in fields of activity. The Registrar was entitled to find that LR Motors had goodwill, that the goodwill was not confined to one locality, and that the similarity of the signs and absence of concurrent use made misrepresentation likely. The analogy with Chelsea Man Menswear Ltd v Chelsea Girl Ltd and another [1987] RPC 189 (CA) supported a nationwide assessment where the business and intended use were not confined to one location.
5. The Registrar was therefore entitled to conclude that Twisted could have maintained a passing-off claim against Jaguar at the filing date and that the opposition should succeed.

• High Court (Chancery Division): The appeal from the Registrar of Trade Marks was dismissed.
• Registrar of Trade Marks: On 15 May 2018, decision O-289-18, the opposition was upheld and registration of “LR” was refused for the relevant goods.