On the first of April this year my wife and I welcomed our third child into the world – in the middle of lock down. What does that have to do with Intellectual Property (IP)? Bear with me.
As soon as we were permitted to drive anywhere it became apparent that the vehicle we had been using to transport two kids, a dog and the occasional mother-in-law, was no longer fit for purpose. So began a relentless search1 for a seven-seater car that could comfortably hold the family and wouldn’t annihilate the bank balance in the process.
I am happy to report that our search eventually concluded with the purchase of this late model Land Rover Defender.
What started as a lukewarm reception for what is essentially an upmarket tractor, has rapidly grown into a full-blown love affair with its rugged simplicity. One has plenty of time to take in its charm, given the positively pedestrian rate at which it accelerates from a standing start to a speed even vaguely approaching the legal limit.
I am not alone in my feelings for the Defender – the model was in production for 67 years and appears to be much-loved by almost anyone who has owned one. However, in 2016 Jaguar Land Rover (JLR) discontinued production of the Defender, as it could not be cost-effectively redesigned to meet stringent EU safety and environmental requirements. My Defender – as all of them – is not even equipped with air bags!
Enter the INEOS Grenadier. INEOS is a chemical company owned by one of the United Kingdom’s richest men, Sir Jim Ratcliffe.2 As a fellow lover of Land Rovers, when the original Defender retired, Ratcliffe tried to persuade JLR to sell him the rights so that he could continue production. When that didn’t happen he began producing his own vehicle, the Grenadier – named after the London pub ‘The Grenadier in Belgravia’ where the idea was first conceived.
The Grenadier looks like this:
How, you might ask, could Ratcliffe get away with producing a vehicle so similar to the Defender without the consent of JLR?
In New Zealand, industrially applied items (i.e those with more than 50 examples produced) fall under copyright law and are protected for 16 years from the date of industrial application (a much shorter term than non-industrial copyright). However, this kind of protection is not the norm in overseas jurisdictions, such as the UK. In most countries that recognise copyright in industrial design, the protection ends as soon as the design is put into production. Unless the owner has sought to register the design, others will be free to copy it. Given JLR’s response to Ratcliffe’s plans (see below) one can only assume that no such registered designs existed.
After rejecting Ratcliffe’s offers, JLR tried to register six trademarks for the different shaped versions of the Defender spanning from the original 1948 model to the 2016 version. The trade mark representations of the 2016 110 model (i.e. my Defender) looked like this:
Maybe I am biased (or a total train spotter) but they look distinctive to me. JLR surveyed 495 people to see if they also recognised the car as a Defender, with a 20-40% success rate.
However, the UK Intellectual Property Office ruled that the Defender was not sufficiently distinctive from other 4x4s to justify the trade marks.
According to JLR, which is contesting the ruling:
“The Defender is an iconic vehicle which is part of Jaguar Land Rover’s past, present and future. Its unique shape is recognised around the world, with the heritage shape being protected in other key markets. Protecting our intellectual property is something we take very seriously, so we are appealing the Intellectual Property Office ruling on the protection of the Defender shape trademarks.”
One might well consider that seven decades of inaction to secure the relevant rights belies the “heritage” rhetoric and call into question JLR’s claim that it take its IP ‘very seriously’. This is not the first time that JLR has unsuccessfully attempted to register elements of the Defender brand. In May last year, the UK Registrar of Trade Marks upheld an opposition by Yorkshire based Twisted Automotive to an application by JLR to register the trademark “LR” in respect of various goods including land vehicles, parts and fittings for vehicles, wheels and their accessories. Twisted opposed the trade mark stating that it had been selling the same goods and providing services under the unregistered sign “LR Motors” since November 2015.
Incidentally, JLR is in good (or should that be bad?) company. In May this year Ferrari lost a legal battle in the European Union (EU) regarding a trade mark registration for the shape of its iconic 250 GTO which looks like this:
The 250 GTO is the most expensive car to sell at auction (for a cool USD$70 million:)3, and only 36 units were made between 1962 and1964.
The challenger, Ares Design, argued that Ferrari had not used the contested design since 1964, and had no intention for future use when they filed for the EU trade mark in 2007. Despite (arguably correct) protestations from Ferrari that the shape of the 250 GTO is “recognised as one of the most glorious and iconic Ferrari cars ever created”, the EU sided with Ares Design and cancelled the registration for all but toy vehicles and scale models which Ferrari had licensed. This decision potentially paves the way for other companies to build copycat vehicles or modern interpretations of the Ferrari 250 GTO.
The published decision stated:
“In the present case, the Cancellation Division considers that genuine use of the contested EUTM has been sufficiently demonstrated for the relevant factors in relation to toy vehicles, scale-model vehicles, whereas no use of the mark or proper reasons for non-use have been demonstrated in relation to any of the other goods for which it is registered.”
As a result, the European Union Intellectual Property Office said Ferrari had not proven genuine use for a number of goods, which importantly included vehicles.
The moral of the story? If you design an iconic product you’d better protect it and keep making it, or someone else will.
If you’re wondering whether I’ll be buying a Grenadier, the answer is: probably not. As much as I admire anyone with the cojones to not only take on one of the world’s preeminent automotive manufacturers, but to name the resulting product after his favorite pub; for me something has gone wrong in the translation – air bags notwithstanding.