This was a recent decision of Mr Justice Rose in respect of an appeal from a decision of the UKIPO (Registrar of Trade Marks) where Jaguar Land Rover (‘Jaguar’) sought to overturn the decision refusing ...
...registration of the mark ‘JR” in class 12 – the registration having been opposed by Twisted Automotive (‘Twisted’) on the basis that it had goodwill in the unregistered sing “JR motors”.
Twisted’s business over many years was in relation to the sale of second-hand Land Rovers and was inevitably dwarfed by the multi-billion pounds a year turnover of Jaguar. However, Jaguar had no prior registrations in relation the “JR” branding and there was no evidence that it had ever made any use of such a sing (although not mentioned in the judgment this case seems to have a degree of similarity with the decision of Pumfrey J. in DaimlerChrysler AG v Alavi (t/a Merc)  RPC 42 – in relation to the right to use the sign ‘merc’).
The judge concurred with the decision of the IPO hearing officer that Twisted had the necessary goodwill in the sign “JR motors” such that its use by Jaguar would be deceptive rather than confusing – “mere confusion” not enough being enough to make out a claim in passing off, which is the basis of the opposition under s.5(4) Trade Marks act 1994: Phones 4U Ltd. v Phone4U.co.uk Internet  EWCA Civ 244. And that there was nothing in principle wrong with the conclusions reached by the Hearing Officer – conclusions that the court should be cautious in overturning on appeal: Apple Inc v Arcardia Trading Ltd.  EWHC 444 (Ch).
One further important point to come out of the decision is in relation to the geographical extent that a single physical showroom business can acquire through its on-line presence – both in terms of advertising on trade-sites and through use of social media platforms  and  leading to country-wide sale. The evidence showed that an assertion that Twisted’s business was simply local to its showroom was plain wrong.
A further consideration regarded as noteworthy was the fact that should Jaguar be allowed to use the JL sign there was a real danger that Twisted would be seen by the public as an authorised dealer for Jaguar – and not the independent business that Twisted wished to be.
For those reasons – and despite the vast gulf in size of the two businesses – the Court upheld Twisted’s opposition to registration of the JR mark. When it comes to rights in passing off size is clearly not everything.
Tim Sampson / 25th Feb 2019
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