Published: 28 September 2017
Area of Law: Intellectual Property
I object! Understanding intellectual property rights
In 2016, businessman Jim Ratcliffe, the billionaire founder and chairman of the chemicals firm Ineos, announced his intention to build a successor to the Land Rover Defender, whose famous owners have included the Queen.
This has hit the headlines again recently due to Mr Ratcliffe’s claim that he may move potential production abroad unless he receives state support from the UK government, but the story raises interesting IP issues in relation to whether Ineos’s ‘spiritual successor’ to the Defender would infringe any of Jaguar Land Rover’s (JLR) intellectual property rights.
The Defender’s backstory
The original car was part of the original Land Rover series, and was first produced 1948. After almost 70 years, production of the model ended on 29 January 2016.
JLR has now announced that they will be launching a new version of the Defender, with an updated design but retaining the name, and which is predicted to arrive at some point in 2018.
Mr Ratcliffe has however reaffirmed his intention to invest up to £600m on Ineos’s vehicle which is set to be released in 2020, and has claimed that the vehicle will contain ‘the DNA’ of the Defender. The question is which intellectual property rights JLR may use to object to this.
IP rights in the Defender
Any protection for the Defender model in the form of patent or design rights will now be extinguished, due to the time that has passed since the design was created.
In terms of trade mark protection, JLR owns registered trade marks in the UK and EU (and many other territories) for the name DEFENDER, and so Ineos’s vehicle will at least have to be named something different (Mr Ratcliffe appears to have settled on “Projekt Grenadier”). JLR has robustly defended the name DEFENDER in the UK for use with vehicles, including as recently as late 2016 against a Canadian company, Bombardier Recreational Products, which sought to name its new off-road vehicle the “Can-Am Defender”.
JLR has also recently filed various trade mark applications to protect the shape of the Defender. It is notoriously difficult to successfully register a trade mark for a shape in the UK, with Nestlé failing with an application for the shape of the Kit-Kat earlier this year, and with JLR previously failing in an attempt to register the 3D shape of its Evoque model. Whether they will have more success with the Defender shape is to be seen, but Ineos have already opposed the applications. The shape of the Defender model is arguably a more recognisable design however, and so it may have more chance of success than with the Evoque shape. Even Mr Justice Nugee stated during the Bombardier judgment that the “Defender and its predecessor Land Rover can fairly be said to be a very well-known, if not indeed iconic, vehicle.”
Should Ineos’s vehicle be similar to the Defender upon release, there may also be a potential claim for ‘passing off’ available to JLR. However, in the UK such a claim tends to be difficult to prove due to the need to prove confusion on the part of the consumer; where they believe that the goods offered by the defendants are the goods of the claimant. For example, it would be more difficult than an equivalent claim in the US for ‘trade dress’, which is an overall more flexible concept.
What does this mean for businesses?
The case is a good illustration of IP rights in practice as may be applicable to an iconic product. It shows that most IP rights are finite in nature – they come to an end eventually. That is the nature of the bargain with the state – a time limited monopoly to reward innovation, followed by freedom to operate for third parties on expiry.
The notable exception to this is trade marks, which rightly can continue indefinitely (as long as renewal fees are paid). But trade marks only protect a name or brand, not the product itself … unless of course the very difficult applications for a shape mark can succeed where others, such as for Kit-Kat, have not.
In order to protect shapes, and “evergreen” a product, a manufacturer must constantly look to improve and update products and claim ensuing protection for the updates. The theory is we all benefit from the improvements as product lifecycles evolve, and the IP fabric of rights encourages that outcome.