Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd

On an appeal from a specialist trade mark tribunal, the appellate court should not substitute its own evaluation unless the decision involves a material error of law or is clearly wrong. This restraint is especially important where the tribunal has conducted a multifactorial assessment of evidence.

For three-dimensional marks, inherent distinctiveness depends on whether the shape as a whole departs significantly from the norms and customs of the relevant sector, assessed through the eyes of the average consumer. Acquired distinctiveness requires evidence that a significant proportion of relevant consumers perceive the shape, without further indication, as identifying goods originating from one undertaking. Survey evidence must be assessed with all other evidence, and an expert’s analysis does not bind the tribunal.

Jaguar Land Rover appealed the UK Intellectual Property Office decision of Mr Allan James, O/589/19, which refused applications to register the shapes of Land Rover Defender 90 and 110 vehicles, with and without rear-mounted spare wheels, as trade marks for specified goods and services.

The Hearing Officer found that the shapes lacked inherent and acquired distinctiveness and that certain applications had been made in bad faith. Jaguar Land Rover challenged the findings on inherent and acquired distinctiveness. Ineos additionally relied on the substantial-value ground and initially cross-appealed concerning other goods, but withdrew that cross-appeal following Sky v Skykick.

1. Standard of review. The appeal was a review of the Hearing Officer’s decision. Applying REEF, Talk for Writing Trade Mark and The Royal Mint Ltd v The Commonwealth Mint and Philatelic Bureau Ltd, the court would intervene only for a material error of law or where the decision was unsupportable or clearly wrong. A specialist tribunal’s evaluative findings required particular caution.
2. Inherent distinctiveness. The correct question was whether the shapes as wholes departed significantly from the norms and customs of the passenger-car sector. It was not necessary that every feature be unusual, and an unusual feature did not automatically make the whole shape distinctive. The Hearing Officer was entitled to treat the Defender’s distinctive windows as minor variations and to give limited weight to design experts’ opinions about what average consumers would perceive.
3. Acquired distinctiveness. The Hearing Officer was entitled first to reach a provisional view on the evidence of use, promotion and trade statements, then to assess survey evidence and stand back to conduct a global assessment. Windsurfing Chiemsee did not require survey evidence to establish distinctiveness independently. The relevant issue was whether consumers perceived the shape, used alone, as guaranteeing origin, rather than merely recognising or associating it with Land Rover.
4. Evidence and modifiers. The Hearing Officer was entitled to assess expert survey evidence himself and to use sample responses as illustrations after considering the admissible evidence as a whole. Evidence concerning modified Defenders did not establish that consumers relied on the shape alone to identify JLR as the source. The absence of confusion was relevant but not determinative.
5. Disposition. The findings disclosed no material error of principle and were not clearly wrong. The appeal was dismissed. The court did not determine the substantial-value ground because the parties accepted that it served no practical purpose in light of the findings on distinctiveness.

• High Court (Chancery Division): appeal from the UK Intellectual Property Office decision, O/589/19. Appeal dismissed.