“[49] I accept that it would be inappropriate to assess the elements of the shapes at issue at a lower level of detail than would realistically be undertaken by an average consumer of the goods. This means that it is necessary to exercise a degree of caution when deciding how much weight to attach to the evidence of design experts, such as Mr Mays, who say that there are important design differences between the shapes at issue and those of other similar vehicles on the market. [50] Further, although I accept that it is necessary to consider what are the norms and customs of the sector, reducing this process to a comparison between written descriptions of common features and written descriptions of the features that make up the contested marks runs two risks. Firstly, reducing a shape mark to written descriptions of its various features may not capture the way that those features are arranged or configured. Configuration could, by itself, make the shape as a whole depart significantly from the norms and customs of the sector. Secondly, focussing exclusively on the individual features of a shape mark may give those elements of the marks more or less importance than they deserve in terms of their contribution to the overall shapes of the product. [51] It is important to keep in mind that what ultimately matters is whether the shapes as wholes depart significantly from the norms and customs of the sector. Therefore, although it is relevant, it is not necessarily fatal that some (perhaps even, all) of the features of a shape are not unique to the mark at issue or unusual in the sector concerned. Equally, the presence of one or more features which are unique to the shapes at issue, or at least unusual in the sector concerned, does not automatically mean that the shapes as wholes depart significantly from the norms and customs of the sector. This may be a factor when, considered by itself, the unique or unusual feature(s) in question makes only a small contribution to the overall impression created by the shapes.”
“[58] I have noted Mr Mays’ evidence. Some of the design differences he points out, such as surface irregularities on the body of the Defender vehicles from the use of spot-welded flat body panels, are not visible in (and therefore not part of) the marks applied for. More generally, Mr Mays is a design expert. Differences in design that appear important to him may be unimportant, or may not even register, on average consumers of passenger cars. I am therefore doubtful whether many of the other design differences he considers important would be regarded as significant departures from the norms and customs of the sector by average consumers of passenger cars. [59] JLR also relies on published comments by journalists and others to the effect that the shape of the Defender models is distinctive. However, these observations depend, at least in part, on the writers’ familiarity with the shape(s) because of their long use in trade. In my view, this part of JLR’s evidence is more relevant to the case that the shapes have acquired distinctive character through use. I will therefore return to this evidence in more detail when I come to deal with this part of JLR’s case. [60] Considering the matter at the relevant dates, I find that the shapes and appearance of the Defender did not depart significantly from the norms and customs of the passenger car sector. That is the case whether or not the shapes include a rear mounted rear wheel… I accept that the shapes applied for look very different to those of some other types of vehicles, such as hatchbacks and sports cars, but the test is not whether the shape of a 4x4 vehicle departs significantly from the shape of a hatchback or a sports car: it must depart significantly from shapes used in any sector of the passenger car market, including the 4x4 sector. It is true that the use of ‘arrow shot’ rear windows and alpine side windows was unusual, if not unique, in the passenger car sector at the relevant dates. However, I find that these are minor variations from the norms and customs of the passenger car sector. I also note that these features are not part of the ‘701 or ‘751 marks, i.e. the Series 1 and 2 Land Rovers. All the other features of the shapes at issue, including the primary features relied on by JLR, are either within the norms and customs of the passenger car sector, or minor variations thereon. Further, although there is a significant design element in the way that the external elements of the vehicles are configured, there is nothing about the configuration which makes the resulting shapes depart significantly from the norms and customs of the sector.”
“With this in mind I turn to JLR’s survey evidence to examine whether it is sufficient to remove those doubts and establish that the Marks had indeed acquired distinctive character”
“[105] So the key question is whether JLR has shown that a significant proportion of relevant average consumers would perceive the shapes applied for, without further indication, as distinguishing goods which have been placed on the market by JLR, or with its consent, from those of other undertakings. In answering that question, it is relevant to consider whether consumers would be likely to rely on the shapes at issue to make or confirm their transactional decision in the goods. However, it is not necessary to show that relevant consumers have relied on the shapes alone in the past. Therefore, JLR’s case cannot fail simply because there is no evidence that consumers have relied on the shapes of the Defender models to make or confirm their transactional decisions in the goods in the past.”
“[106] However, considering the position at the relevant dates in 2016, several things make me doubt whether a significant proportion of relevant average consumers would have both (a) recognised the shapes at issue as those of the LAND ROVER DEFENDER models and (b) perceived the shapes applied for, without further indication, as distinguishing passenger cars marketed under the control of JLR from marketed vehicles embodying the shapes at issue under the distinctive word marks LAND ROVER and DEFENDER. The natural inference is that these signs played the primary roles in distinguishing the trade source of JLR’s goods. JLR’s counsel, Miss Lane, submitted that, unlike many other goods, the public use the shapes of passenger cars to distinguish the trade source of the products. I accept that consumers are drawn to cars they like the look of and will come to recognise the shapes of popular vehicles, or those of special interest to them. However, in my experience when it comes to making or confirming their transactional decisions about passenger cars, consumers generally use the names of the manufacturer and/or product/model names. [107] Secondly, there is evidence that third parties have sold passenger cars based on the shapes of the Defender models in the UK under different trade names, i.e. the Santana PS10, as well as various companies marketing modified versions of the Defender under different names, such as Overfinch and Twisted. If the shapes of the Defender models were truly distinctive of products marketed under the control of JLR, one would expect third parties marketing passenger cars with very similar shapes to have caused some confusion. However, there is no evidence that consumers were confused into thinking that JLR was responsible for these vehicles, or that they were marketed with JLR’s consent. For example, there is no evidence of anyone blaming JLR for a problem they experienced with a Santana or Overfinch vehicle. It is true that the evidence does not establish the size of the market in modified versions of Defender models, but as JLR itself filed evidence about the existence of this trade, it is reasonable to assume that it considered it to be on scale that was relevant. Further, as the marketing of modified versions of the Defender by Overfinch and other modifiers depended on the availability of Defender vehicles to modify, it is obvious that such use of the Defender shapes for these parties vehicles must have occurred when the Defender was still in production, i.e. prior to the relevant dates.”
“48. Car owners sometimes choose to modify their vehicles. In this way, owners can personalise what otherwise would be a standard production vehicle. An industry has grown up around this demand for customization, and the industry has been in existence for many years. Modifications can take many forms including, for example, performance modifications to increase a vehicle's horsepower and visual modifications to change the way a vehicle looks. 49. The business of a number of the third party modifiers is based around, or includes, modification of the Defender. Examples of such companies are Twisted, Overfinch, Kahn/The Chelsea Truck Company and JE Motor Works. None of these third party modifiers is licenced, authorised or endorsed by JLR and JLR does not accept that unauthorised third parties should be allowed to carry out modifications to its vehicles in this way. 50. The modifiers frequently remove the original manufacturers’ badging from vehicles and replace it with their own. The clear intention is that customers will recognise the base vehicle (which has been modified) from its shape. Where the vehicle which has been modified is a Defender, I believe that this is obvious from its shape which in turn is why I believe customers want to buy it… 51. On its website, in advertising its exterior modification services, Overfinch emphasise the importance of retaining the shape of the Defender: “Retaining the iconic body shape but introducing distinctive characteristics and a sense of purpose that make it unmistakably Overfinch”. 52. As can be seen from the image attached at Exhibit AJB17.5, the original badging on the vehicle modified by JE Motor Works has been replaced with a JE double-wing badge. The website states: “At a glance, the badge is one of the few external details that distinguish the ultra-rare Zulu from other Land Rovers”