GARY PUSEY
THAT is how the website carsupermarket.com headlined its story on the High Court’s decision in JLR’S long-running dispute over the Defender trademark. But the website was being far too generous to JLR because the score is actually a crushing 3:0, and I can’t help but feel that JLR’S pain is to a large degree self-inflicted. The latest decision by the courts leaves the way clear for INEOS Automotive to continue full steam ahead with the new Grenadier, due to be launched next year.
It all began when JLR decided to cease production of the real Defender in January 2016, even though its successor was still years away from launch. INEOS boss Sir Jim Ratcliffe, a lifelong Land Rover fan, was incensed by the decision and allegedly did not believe JLR’S reasoning. Ratcliffe offered to buy the production line and tooling and continue making the vehicle himself, believing that it would be perfectly possible to create a brand-new vehicle that would be true to the principles of the outgoing Defender. In fact, Mercedes would show how right he was when they launched the second-generation G-wagen in January 2018. It looked just like the old one but shared only three components with its predecessor: the push-button door handles, the spare wheel cover and the headlamp washers.
By all accounts, talks between INEOS and JLR were at an advanced stage before JLR pulled the plug in January 2016, which no doubt irritated Ratciffe even more. But probably not as much as JLR’S next move, which was to send him a letter ‘making it clear that it would regard the production of vehicles of the same shape and appearance as the Defender models as a breach of its IP rights and as a misrepresentation that JLR was connected to those vehicles’. It might as well have been a declaration of war.
Belatedly, and perhaps realising the corner it had backed itself into, JLR then sought to formally trademark the shape of the Defender and some of its Series vehicle ancestors. I say belatedly, because JLR did not submit its applications in relation to the Defender 90 and 110 body shape until April and May 2016, several months after production of the vehicle had ended. Further applications were made in September 2016 relating to the shape of the Series I, and in August 2017 for the Series II. I’m no expert, but that looks like a badly thought through process and some frantic shutting of stable doors after the horses had bolted.
In fact, JLR already held a registered design for the Defender 90 Heritage model which it had applied for in September 1999, so you’d assume the company already had much of the protection it needed. But it hadn’t allowed for Ratcliffe’s renowned attention to detail and his tenacity, and in December 2017 INEOS filed a claim to cancel JLR’S existing Defender 90 Heritage registered design. What followed is not far short of farce, and JLR found themselves trailing 1:0 after what can best be described as an embarrassing own goal.
The case appears to have hinged on a technicality, although if there are any intellectual property lawyers among LRM’S readers they might well tell me I’ve got it all wrong, but here goes! For the existing registered design to stand, it had to relate to a design that had not existed before the application. Ineos claimed that the Heritage 90 had been launched to the public in August 1999, a month before JLR had applied to register the design, citing one of James Taylor’s books and an article in Autocar magazine dated July 1999 as evidence. JLR’S counsel tried to argue that James Taylor might not know what he was talking about, that the Autocar magazine might not be genuine, and explained that JLR could not find from their own records exactly when the Defender Heritage had been launched. The Registrar was unimpressed and found in favour of INEOS, cancelled JLR’S registered design, and instructed it to pay costs to INEOS.
Round two was rather more protracted and involved INEOS claiming against JLR’S later registered design applications submitted in 2016 and 2017. JLR’S applications hinged on the claim that there were important elements in the design of the Defender and its Series ancestors that were unique. Its case was founded on an impressive battery of expert witness statements from Tim Hannig, who was a director of JLR Classics at the time; J Mays, ‘a Visiting Professor of Vehicle Design at the Royal College of Art, having previously managed the design departments of multiple automotive companies, including Audi, Ford, Volvo, Mazda and JLR’; Andrew Wheel, JLR’S Head of Exterior Design Realisation; Amanda Beaton, JLR’S Global Intellectual Property Counsel; and a market researcher named Philip Malivoire who had been retained by JLR to go out onto the streets to talk to 500 members of the public, armed with pictures of Land Rovers and a list of questions.
INEOS fielded a much leaner team comprising James Williams-mitchell, its Head of Legal, Automotive; Stephen Harper, ‘a design consultant with long experience of automotive design’, and Ashley Belton, who is an ‘experienced Mechanical Design Engineer’. INEOS argued that there was nothing especially unique about the design of the utility Land Rover, and the Registrar agreed. It was 2:0 to Ineos.
Undaunted, JLR immediately appealed but in August the High Court upheld the Registrar’s decision. It was 3:0 to Ineos. Game over, I wonder?
“The latest decision by the courts leaves the way clear for INEOS Automotive to continue full steam ahead with the new Grenadier”