A recent Jaguar Land Rover (JLR) legal case illustrates the importance of understanding IP issues to protect your brand. When Canadian company Bombardier Recreational Products (BRP) chose the name “Defender” for its new off-roader, the overlap with JLR’s much-loved “Defender” branded-vehicle resulted in a conflict.
Not only does this example highlight the importance of proper brand protection, but it also shows that there are procedures in place to assist brand owners to enforce their rights efficiently. In a crowded business environment, how can businesses defend their valuable brands?
(1) Do your research
When considering potential brand elements (such as names or colours), thorough due diligence is an important step to protect your brand. To avoid problems later down the line, businesses should do clearance searches before committing to a brand name.
It may be possible to negotiate co-existence if another business has already staked a claim, but it is wise to make the approach sooner rather than later. Closing your eyes to potential conflicts runs the risk of legal action, bringing with it the wasted investment, negative publicity, damages and cost penalties involved with an adverse decision.
(2) Understand the scope of protection of the trade mark
BRP challenged JLR’s European trademark registration for “Defender” – arguing that the scope of protection was too broad. Rather than protecting use for “land vehicles, motor vehicles and motor land vehicles”, BRP said that the trade mark should be more restricted. But a tighter scope of cover, for cars only, was ruled too narrow for JLR’s range of vehicles.
A trademark registration must include a list of goods and services that it will be used for. When filing a European trade mark, you can file a list extending beyond the current scope of your activities. You can then expand the range of activities to “fill” the trade mark scope and so avoid the unused areas being cut away. (UK trade marks are a little different, requiring a statement of intention to use at the time of application.)
Understanding how to tailor the scope of your own registrations, and how to challenge the scope of protection that others have registered will help to avoid disputes and protect your brand.
(3) Use business-friendly streamlined court procedures
The Defender case made use of the shorter trials scheme currently being piloted with the flexible trials scheme pilot in the High Court. It offers streamlined procedures designed for the swift resolution of business disputes.
It also sped through the courts, thanks in part to the success of JLR’s summary judgment application, enabling the dispute to be resolved without a full trial. JLR took advantage of the shorter trials scheme timetable to get its application heard promptly. In a system where court timetables are under pressure, being able to fix an early hearing date is a real advantage.
(4) Know your limits
Many businesses get help from trademark attorneys or lawyers when filing for trade mark protection – their help can eliminate some common mistakes. And of course there is useful guidance on the Intellectual Property Office website.
Generally, you cannot register a brand that has no “distinctive character”, that is descriptive, or that has become customary. These hurdles can be overcome if the brand has become distinctive through use, but that has to be proved.
It’s also not possible to register a brand that is identical to an earlier mark registered for identical goods, one that is identical or similar to an earlier trade mark registered for similar goods where confusion may result, or a mark which is identical or similar to an earlier trademark with a reputation, where the use of the brand would take unfair advantage or be detrimental to the distinctiveness of that earlier trademark.
The Defender case illustrates that a sensible range of goods or services will normally be allowed. But a business should not seek protection for goods or services for which it has no intention of using, as this can make the registration vulnerable to attack.
(5) Monitor use of your brands
Active monitoring of is a must if you want to protect your brand. If you find infringing activity, a letter before claim is often the first step. These need to be prepared with care to avoid finding yourself on the receiving end of a “threats” action.
If litigation is unavoidable, there are different choices to reflect the value and complexity of the dispute. The small claims track in the IPEC is for disputes with a value up to £10,000. For higher value disputes worth up to £500,000, multi-track in the IPEC may be suitable. Alternative dispute resolution (ADR) is widely available for those concerned about the cost of court proceedings.
The shorter trials scheme worked well in the Defender case. And for more complex or high value matters, the High Court might still be the best option.
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