|Defending passengers night and day|
Jaguar has two trade marks for DEFENDER which protect it in the UK:
- a UK mark filed in 1989 for "motor land vehicles and parts and fittings therefor; all included in class 12" and;
- an EU trade mark filed in 2014 for "land vehicles; motor vehicles; motor land vehicles".
|Cats can defend you in the Underground|
As the application for partial revocation failed, there was no defence to the double identity infringement claim and the judge gave summary judgment on the EU trade mark infringement claim.
|That's not a car!|
The Land Rover High Capacity Pick up in action
You might think that was the end of the matter. However, in view of the "expressions of disquiet" by some English judges on the issue Nugee J went on to consider what bad faith meant in an EU trade mark context and whether Jaguar Land Rover might have applied for its mark in bad faith.
In Trillium at , the Cancellation Division helpfully identified bad faith as "the opposite of good faith". They went on to note that this "generally impl[ies] or involv[es], but [is] not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive".
Although not limited to these categories the judge accepted that bad faith is a serious allegation and one which requires facts to establish. In this instance Bombardier had failed to suggest an alternative narrower specification which Jaguar Land Rover could have used instead. In oral argument it was suggested that the specification could be limited to "motor cars, automobiles, cars" (i.e. class 120199).
The judge disagreed. The Defender series includes professional vehicles made to bespoke specifications including e.g. a high capacity pick up which Nugee J noted is clearly not a "car". The judge summarised the situation as follows:
This means that the defendant is seeking to allege that the claimant has acted in bad faith in effect by applying for too broad a specification, but has not successfully identified any narrower specification which the claimant should have applied for instead, the only suggestion being one which seems to be manifestly unsustainable.
It may be possible to argue bad faith in relation to an over broad specification in the future but you need to be sure that the