The newly launched INEOS Grenadier was called a copycat by many. Its design—the flat-topped fenders, round headlights, angular sides, and near-flat glass—looks a lot like the original Defender. So what could Jaguar Land Rover do to defend its Defender against an imitator?
Read more and learn how this Land Rover look-alike teaches all of us a lesson about trademarks.
For those of you who don’t know INEOS, it is one of the largest chemical companies in the world, formerly known as INspec Ethylene Oxide Specialities.
It was started in Antwerp, Belgium, by Sir Jim Ratcliffe, a British billionaire now based in Monaco.
They made headlines in July of 2020 with its announcement of the INEOS Grenadier—an almost perfect look-alike of the old-fashioned Land Rover Defender.
Interestingly, this made the news
because Jaguar Land Rover (JLR) announced that they would stop producing their iconic Land Rover Defender way back in 2015.
So why is it still an issue even though the Grenadier looks nothing like the new Defender?
To get some context, let’s go back a few years to 2015 when JLR announced that they would stop manufacturing the iconic Defender.
Ratcliffe, a fan of the original Defender, saw this as an opportunity and offered to buy their old tooling and manufacturing rights.
JLR said no. So Ratcliffe—not taking no for an answer,
decided to create his own Defender-style off-roader instead.
He called it the INEOS Grenadier, named after the pub in London where he came up with the idea:the Grenadier in Belgravia.
It wasn’t that surprising when Jaguar Land Rover attempted to prevent the launch of the Grenadier and started legal proceedings in the UK.
It turned out that JLR had never gotten around to trademarking the shape of the original Defender back in the day—because of that,
its recent attempts to get it trademarked in the U.K. have faced some significant challenges.
There were already previously filed trademarks to protect the Defender.
From the radiator grill, the front and the hood, windows, and roof, front view with wheel arcs, and the back view of the car.
All these marks were filed in December of 2016 and then withdrawn on May 30, 2018.
Many 3D marks were filed for the car’s overall shape filed between May and September of 2016.
All of these marks were opposed on August 11th of 2017 by none other than, you guessed it—INEOS!
On October 3, 2019, the UK Intellectual Property Office released a decision regarding all six oppositions.
It was revealed that the UK Trademarks Office first issued office actions against these applications, alleging that the shapes were considered to be descriptive of an SUV and devoid of any inherent distinctive character.
JLR then submitted evidence that the marks had acquired a distinctive character through prolonged use in trade.
The registrar accepted the evidence and published the applications for opposition purposes.
INEOS opposed the marks on several grounds.
The first three grounds pretty much relate to the same thing, just worded differently.
INEOS was claiming that the marks were devoid of any distinctive character and could not distinguish the vehicles of JLR;
because similarly-shaped cars could be (and actually were) made by just about anybody..
The fourth ground relied upon the functionality doctrine, stating that the shape of the Defender resulted from its nature as an SUV and was necessary to achieve a technical result.
In other words, the shape was dictated by functionality and wasn't purely about distinguishing SUVs of JLR from SUVs of every other manufacturer.
The fifth ground was that registration of the Defender's shape would be contrary to public policy.
As the final nail in the coffin, the sixth ground was that JLR filed the applications in bad faith since in 2016 when it filed the applications, it had no intention to use the mark to make the old Defender.
Remember, JLR announced in 2015 that it would end production? Oops.
The UK Intellectual Property Office found that the marks lacked inherent distinctiveness for goods and services related to land-based motor vehicles and that JLR’s marks had not acquired distinctiveness for any of the goods or services they applied for.
They also held that the applications had been made in bad faith for non-four-by-four vehicles.
As a result, all of JLR's applications were refused.
JLR later attempted to appeal the decision in the UK courts, but that challenge failed in August of 2020.
The court confirmed that the shapes JLR sought to get protected were not distinctive enough when compared to the shapes used by other SUVs.
Now that you know what happened in the INEOS Grenadier vs JLR Defender case, the importance of trademarks should be crystal clear;
protect the brand you’re building, because the time may come when you have to ...defend it… (yes, I made the pun) and it will be too late.
Take the Jaguar Land Rover’s Defender as a perfect example.
If they had only secured their designs earlier, INEOS would not have been able to create their Grenadier… at least not without paying JLR a small fortune to do so.
What about you? Have you protected your brand?