Jaguar Land Rover blocks JAGUAR trademark for leather goods

An Italian company saw an opportunity to use a JAGUAR lookalike trademark for products that included umbrellas, bags, and leather goods. Naturally, Jaguar Land Rover filed an opposition. A standard defence in claims relating to older trademark registrations is a request for ‘proof of use’: a trademark that has not been put to genuine use for a period of five years for the goods for which it was registered cannot be effectively invoked, and may even be cancelled. This is why it is so important for companies to regularly collect proof of the use of their own trademarks. In this case, Jaguar was able to furnish proof that included brochures entitled ‘The Collection Jaguar’, which included bags, suitcases, and wallets. The BOIP did not consider this to be sufficient proof that the trademark had been put to genuine use for those goods: a brochure does not imply that the products it features are actively marketed. As a result, the opposition was dismissed with regard to several products.

According to Jaguar, the BOIP is setting the bar too high: there is no requirement that products have actually been marketed. The issue is whether the use of the trademark is intended for the purpose of creating or maintaining a market. That can be done through activities other than specific sales. A consumer who sees a bag in The Collection Jaguar, naturally links this to the JAGUAR trademark on the cover. That constitutes use of the trademark. This case was one of the last ones to be appealed to The Hague Court of Appeal (appeals are routed to the Benelux Court of Appeal as of last spring). The key question: does the distribution of brochures entitled ‘The Collection Jaguar’ that feature bags, suitcases, and wallets constitute ‘genuine use’ of the JAGUAR word mark for those goods? Yes, according to the Court of Appeal: that prompts a connection to be drawn to the products in the brochure, which means that the trademark is being used for those products. The brochures were distributed among customers in the Benelux region in the relevant period of use. The products were also made available to authorised Jaguar distributors. The Italian imitator was out of luck: the trademark application was rejected in its entirety.

Maarten Haak represented Jaguar Land Rover in this appeal.