The High Court has dismissed an appeal by Jaguar Cars Limited and The Jaguar Collection Limited against the Controller of Patents, Designs and Trademarks’ decision to reject their opposition to a watch trademark application by Manufacture des Montres Jaguar S.A.
In a judgment delivered on 24 March 2006, Mr Justice Clarke affirmed the Controller’s decision. The appeal concerned an application made on 4 December 1991 to register JAGUAR for watches in Class 14. The judge assessed the relevant circumstances as they stood on the application date and was confined to material that had been before the Controller.
Jaguar Cars argued that the applicant was not the proprietor of the mark, that registration would create a likelihood of confusion, and that the court should use its discretion to refuse registration because of alleged bad faith. The judge said a separate objection about the applicant’s entitlement to rely on an assignment of an earlier mark had been abandoned; he proceeded on the assumption that the applicant had the benefit of that assignment.
On ownership, the judge found that the evidence did not establish that Jaguar Cars had conducted a watch business in Ireland before the application. Evidence included an invoice for three watches sent to the company holding the Irish Jaguar car distributorship, but it did not show that the watches were sold to third parties. Most other invoices related to Northern Ireland. Promotional material offered little evidence of circulation, and an analog clock bearing the mark postdated the application. The judge concluded Jaguar Cars had not shown the prior use needed to establish ownership of the mark for watches in Ireland.
On confusion, the court considered whether normal and fair use of JAGUAR on watches would create a real likelihood of confusion among a substantial number of people, as of December 1991. The judge accepted that brand extensions can cause confusion, but found Jaguar Cars’ extension to watches in Ireland at that time extremely limited and largely tied to promotions associated with cars. He was not satisfied that the evidence showed a reasonable likelihood of confusion.
Jaguar Cars also alleged bad faith, citing similarities in typeface and advertisements in other jurisdictions that it said used a leaping-jaguar device. The judge found the examples of potentially inappropriate conduct few and insufficient to justify refusing an otherwise registrable mark. He therefore declined to exercise discretion against registration and dismissed the appeal, affirming the Controller’s decision.