IP rights defended as Jaguar fights off Canadian interloper - Palmers Solicitors

IP rights defended as Jaguar fights off Canadian interloper

IP rights defended as Jaguar fights off Canadian interloper

Jaguar Land Rover (JLR) has successfully taken legal action to protect its intellectual property rights, after a Canadian company tried to use the ‘Defender’ name on its range of off-road vehicles in Europe.

JLR, which ceased production of its iconic Land Rover Defender 4X4 vehicles in 2016, still owns the commercial rights to the name. It took Bombardier Recreational Products (BRP) to the High Court for illegally using the Defender marque on vehicles which the Canadian company had been marketing as "fun, recreational off-roaders."

As a result of JLR’s legal claim, the High Court has issued a Consent Order confirming that BRP had infringed the Defender trademark.

Following the Court’s decision, BRP is set to abandon a current EU trademark application for Defender and has given assurances it will not seek to register another mark within the EU for Defender or similar marks such as Defender Max or Defender Pro.

The High Court ruling means BRP cannot use Defender on any vehicle sold in the European Union and must remove the badge from all goods, including any promotional material such as brochures and their web pages, in use throughout the EU.

Bombardier was also ordered to pay JLR a small undisclosed amount in damages and legal costs.

Welcoming the successful outcome of the case, JLR said the decision demonstrated it would "protect its brand resolutely", adding that it would pursue legal action wherever necessary against anyone trying to pass off anything similar.

Although the last Land Rover Discovery rolled off the production lines in January 2016, the company has no plans to completely kill off the iconic vehicle which it is claimed is a favourite of The Queen. The company is already working on plans for a new Defender range although the new fleet could be manufactured abroad.

BJ Chong, a Partner and Intellectual Property law expert with Palmers, said: "BRP’s vehicle – the ‘Can-Am Defender’ continues to be sold as such in both Canada and the United States. However, problems arose for the company when it attempted to expand into Europe.

“BRP now has to go back to the drawing board and consider its options. It will need to decide whether it wishes to rebrand its all-terrain vehicles in Europe under a separate brand to its US counterpart, or undertake a complete global rebrand. It may alternatively decide that the European market is not sufficiently lucrative to bother with and opt to focus all its efforts state-side.

“The case illustrates the importance of planning, protecting and regulating trademarks, particularly if your company has future ambitions to expand overseas."

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