JAGUAR for watches allowed despite Jaguar Cars' opposition

In Jaguar Cars Limited v The Controller of Patents Designs and Trademarks (Case 342 SP, March 24 2006), the High Court of Ireland has refused an appeal brought by Jaguar Cars against a decision of the controller of patents, designs and trademarks to dismiss its opposition to the registration by Manufacture des Montres Jaguar SA of the mark JAGUAR in Class 14 of the Nice Classification.

Jaguar Cars' principal business involves the manufacture, distribution and sale of cars under the JAGUAR trademark and the 'leaping jaguar' device.

Des Montres manufactures watches and sought the registration of the mark JAGUAR in respect of those goods. Jaguar Cars has no registered trademark in Ireland for watches.

Jaguar Cars relied on three grounds of appeal:

• Des Montres was not the owner of the mark;
  
  
• registration should be refused under Section 19 of the Trademarks Act 1963 on the basis of likelihood of confusion; and/or
  
  
• the court should exercise its discretion under Section 25(2) of the act on the basis of Des Montres' contended lack of good faith.

The court reviewed the grounds for ownership under Section 25(1) of the act and the relevant case law. It was not contended that Des Montres used the mark in Ireland prior to its application in 1991. The first issue was whether Jaguar Cars had used the mark on the relevant goods in Ireland prior to 1991. If so, it was the owner of the mark. Jaguar Cars submitted evidence, in the form of invoices and brochures, of its use of the mark on watches in Ireland. The court held that while there is no de minimus rule in relation to use of a trademark, the use must be for something that can realistically be called a business. The court was not satisfied that Jaguar Cars had a business of selling watches at the relevant date.

The court addressed likelihood of confusion and brand extension. It accepted that brand owners exploit their brands for unconnected goods. However, it noted that 'Jaguar' is an ordinary English word and although a major brand for Jaguar Cars, it did not follow that consumers would believe that every product bearing the mark JAGUAR was its product. The court held that there was no evidence of "general sale" of watches bearing the mark JAGUAR by Jaguar Cars (through outlets not directly associated with Jaguar Cars), which was held to be a significant factor for likelihood of confusion.

As the court dismissed the mandatory grounds of refusal of the application, it considered its discretion under Section 25(2) of the act. Jaguar Cars argued that the discretion should be exercised due to Des Montres' lack of good faith in using the mark in a particular typeface and style, which meant that it was virtually identical to that of Jaguar Cars. The court held there was not a sufficient level of inappropriate behaviour on the part of Des Montres to justify exercise of its discretion.

This decision clarifies previous law in respect of trademarks being used by a business. The fact that Jaguar Cars did not sell watches as a business appears to have been the main stumbling block to the opposition. The court held that scale of a business is irrelevant and that even the smallest business (or a very small part of a bigger business) can be taken into account. On the facts, the court could find no such business use by Jaguar Cars.

Patricia McGovern and Hazel Larkin, P McGovern & Co Solicitors, Dublin