24 August 2020

Jaguar Land Rover Limited v Ineos Industries Holdings Limited [2020] EWHC 2130 (Ch)

On appeal, Jaguar Land Rover Limited has lost its legal battle to protect various models of the Land Rover Defender four-by-four as trade marks in the United Kingdom. The UK High Court upheld the UK Intellectual Property Office hearing officer’s decision to refuse the applications for the majority of goods and services sought on the basis that they lacked distinctiveness.


The applications overcame non-distinctiveness and descriptiveness objections at the examination stage but were subsequently opposed by Ineos Industries Holdings Limited. Ineos Automotive Limited, an offshoot of petrochemical giant Ineos, is scheduled to release its own four-by-four vehicle, the Grenadier, in 2022. Reports have described the Grenadier as being inspired by historic utilitarian four-by-fours such as the Defender.

Ineos opposed Jaguar Land Rover’s applications to protect the shape of the Defender models on multiple grounds, including the fact that the marks:

  • are incapable of distinguishing goods or services as those of a particular undertaking (Section 3(1)(a) of the Trade marks Act 1994);
  • lack distinctive character (whether inherent or acquired) and are descriptive (Sections 3(1)(b)-(d)); and
  • were applied for in bad faith in relation to vehicles other than four-by-four vehicles (Section 3(6)).

UK IPO Decision

The hearing officer refused the applications for a significant majority of the goods and services for which registration was sought, including motor vehicles, toys, jewellery and vehicle parts and accessories, but not for a miscellaneous range of goods in Classes 9, 14 and 28 (including webcams, televisions, statues of precious metals and balloons). The hearing officer found that the marks lacked inherent distinctiveness for goods and services related to (land-based) motor vehicles and that the marks had not acquired distinctiveness for any of the goods or services. He also held that the applications had been made in bad faith for non-four-by-four vehicles.

The Appeal Decision

Jaguar Land Rover appealed to the UK High Court on the basis that the hearing officer had incorrectly applied the legal tests for determining whether the marks were distinctive.

Inherent distinctiveness

Both parties had submitted expert evidence on the features of the shapes, their technical functions and how they differed from the norms of the sector (passenger vehicles generally, not four-by-fours specifically).

The hearing officer found that elements of the designs that appeared important to Jaguar Land Rover’s expert may appear unimportant to average consumers, and while some elements of the Defender designs were unusual, the designs as a whole did not significantly depart from the shapes used in the passenger car market. Therefore, the marks were not distinctive.

Jaguar Land Rover argued that the hearing officer’s approach was flawed in:

  • not providing reasons for rejecting its expert evidence;
  • finding that the unusual elements of the designs were only minor variations from the norm; and
  • not considering statements of certain people in the motor industry.

The court dismissed the ground of appeal, finding that the hearing officer had given detailed consideration to the evidence submitted by Jaguar Land Rover, and that as an expert himself on what consumers perceive (by virtue of his positon in a specialist tribunal) he was entitled to find as he did.

Acquired distinctiveness

To demonstrate that the marks had acquired distinctiveness, Jaguar Land Rover had to show that a significant proportion of relevant average consumers would perceive the marks alone as indicating that the goods originated from Jaguar Land Rover – in other words, that they acted as a badge of origin. A number of factors are taken into account when considering acquired distinctiveness, including the scope of the mark’s use, market share and marketing spend.

Jaguar Land Rover submitted survey evidence of the public’s perception of the marks, together with expert evidence on how these surveys should be interpreted. Despite Ineos failing to challenge the conclusions of Jaguar Land Rover’s expert, the hearing officer found that the marks had not acquired distinctiveness.

Jaguar Land Rover argued that the hearing officer had been wrong to consider certain other factors before turning to the survey evidence, apparently causing him to take an unduly negative view of this evidence. Jaguar Land Rover also argued that the hearing officer had been wrong to reach his own conclusions on the survey evidence, rather than accepting those of Jaguar Land Rover’s expert.

The court rejected both arguments, noting that the hearing officer was under no obligation to consider the survey evidence in the first place. The court emphasised that it is the role of the hearing officer to reach their own conclusions on all evidence before them and that they cannot be criticised for not automatically accepting an expert’s opinion.

The court therefore dismissed Jaguar Land Rover’s appeal and upheld the hearing officer’s decision to refuse the applications for the majority of goods and services. 


The judgment highlights (once again) the difficulties that brand owners can face when seeking to register shape marks as trade marks. Even though the Land Rover Defender has been described as an iconic design and is extremely well known among the UK public, the designs were still not considered to be legally distinctive enough to qualify for UK trade mark protection (other than for very limited goods). This is clearly a blow for Jaguar Land Rover in protecting its Defender designs ahead of Ineos’ planned launch of its own four-by-four, which is said to have been strongly influenced by the Defender design.

The judgment is also a reminder on the treatment of survey evidence when assessing the distinctiveness of a mark – while surveys may assist in the UKIPO’s assessment, the hearing officer is not obliged to take them into account, and therefore an applicant should consider carefully the benefit (or otherwise) of carrying out a survey to support a claim to acquired distinctiveness, before incurring the time and cost of preparing one.

This article was written by Harry Jewson and Georgina Shaw and first appeared on WTR Weekly, part of World Trademark Review, in August 2020. 

For more information or if you have any questions, please contact Jeremy Dickerson or your usual IP team contact.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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