A recent High Court decision has prevented a Canadian car manufacturer from using the mark DEFENDER for their off road vehicles.
Jaguar Land Rover, who used the mark DEFENDER for the iconic Land Rover Defender for almost 70 years, objected to Bombardier Recreational Products' use of the mark DEFENDER in connection with off road vehicles. Bombardier applied to register the mark covering "recreational vehicles namely, side-by-side vehicles and structural parts therefor" in class 12 in February 2015. Jaguar Land Rover opposed this application.
Jaguar Land Rover ended production of the original Defender series of vehicles in January 2016 but intend to launch a replacement Defender vehicle in the near future.
Bombardier argued that Jaguar's DEFENDER registration should be partially revoked on the grounds that it was registered in bad faith. Jaguar's EU DEFENDER mark is registered for "Land vehicles; Motor vehicles; motor land vehicles; parts and fittings for vehicles in class 12 and Bombardier argued that Jaguar only used the mark on the Defender series, which they characterised as a single car product.
The Judge concluded that there was no bad faith based on the list of goods claimed in Jaguar's registration. Although the owner of a UK Trade Mark is required to have a bona fide intention to use the mark in relation to all of the goods and services claimed in the application, the EU Trade Mark Regulation does not include this requirement.
The Judge issued a consent order confirming that Bombardier infringed Jaguar's DEFENDER trade mark by using the mark in connection with its off roaders.
Bombardier are now prevented from using the mark or any similar mark on goods, including promotional materials such as on their website, in the EU and have now withdrawn their EU trade mark application.
Jaguar Land Rover welcomed the ruling and stated that they would protect the Defender brand robustly around the world.in: News, Trade Marks