Thomas Coop - This article was first published in the March/April 2016 issue of the ITMA Review, the journal of the Institute of Trade Mark Attorneys (ITMA). For more information on ITMA, please visit http://www.itma.org.uk/

In November 2012, Jaguar Land Rover filed a three-dimensional Community Trade Mark (CTM) application for the sketch shown below in classes 12, 14 and 28.

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Non-distinctiveness

The application was examined and rejected in respect of “land, air and water vehicles and apparatus” in class 12, and “games and toys” in class 28, on the basis that the mark was devoid of distinctive character. The decision was appealed to the Board of Appeal (BoA) which upheld the decision in class 28 but partially annulled the decision for “apparatus for locomotion by air or water”. The sign for the core goods of interest (i.e. land vehicles) was considered to be merely a variation of the norm and thus non-distinctive. An appeal was filed to the General Court, which held that, for “land vehicles, games and toys”, the mark did not depart from the norm sufficiently to be considered distinctive. The General Court partially annulled the decision of the BoA in respect of vehicles as well as apparatus for locomotion by air or water because the sign was considered to depart from the norm with respect to these goods. The broader impact of these decisions is to consider:

  1. the specimen of the mark as filed; and
  2. the value of obtaining some form of registered protection.

Regarding point (i), the Applicant attempted to rely on numerous reviews of the car, which described its design in glowing terms, including an award as Car Design of the Year. It is clear from the decision of the BoA and the General Court that these reviews did not concern the sketches filed but rather the ready-made car. As noted by the General Court, OHIM may not take into account characteristics of the mark that are not set out in an application. The comments in both decisions suggest that, when filing an application, it is sensible to consider filing photographs of a product shape rather than technical drawings. This may help to:

  • highlight the distinctive elements of the shape that the Applicant is trying to protect; and
  • support reliance on materials, such as reviews, that support a claim that the mark is distinctive, and which may otherwise be rejected.

Some consider this decision a partial victory for the Applicant, as it will put third parties on notice of the Applicant’s intention to enforce its rights broadly. In reality, the Applicant has no legal rights in relation to land vehicles, games and toys, absent of acquired distinctiveness post registration. As such, the value of using this application for enforcement purposes is likely to be limited.

Conclusion

The first takeaway is to ensure that an application as filed will show the distinctive elements of the shape. In some instances, it may be prudent to file photographs. The second is that, although there is some value in putting others on notice, the actual value of these rights as an enforcement tool is likely to be limited.