Does the Cobra have trademark venom?

After the claimants sued the defendants for infringement of AC COBRA, the defendants counterclaimed for a declaration of invalidity and an order for revocation for non-use
The court found that CSL did not have the locus standi to apply for a declaration for invalidity
As genuine use of the Ford COBRA registrations was found during the relevant period, this was sufficient to defeat the revocation claim

A recent Intellectual Property Enterprise Court (IPEC) decision has sparked interest in the automobile world since it looked at the right to use the iconic sign AC COBRA on cars in the United Kingdom (Acedes Holdings LLC v Clive Sutton Ltd ([2023]EWHC 2005 (IPEC)), 7 August 2023).

Background
Cobra history
The mark COBRA has, like many trademarks, an interesting history. It was first used in 1962 in relation to a car with an engine from The Ford Motor Company in a chassis manufactured by AC Cars, created at the direction of American racing driver Carroll Shelby. Mr Shelby’s company, Shelby American Inc, sold the cars in the United States under the name ‘Shelby Cobras’, and AC Cars sold them in the United Kingdom and Europe under the name ‘AC Cobras’.

The first claimant, Acedes Holdings Ltd, acquired some of the assets of AC Cars’ business, including goodwill relating to AC Cobra in 1996. The first claimant is the owner of a UK comparative mark, AC COBRA. The second claimant, AC Cars (England) Ltd, has made cars in the United Kingdom and sold them under the name ‘AC Cobra’ since 2016.

The defendants, Clive Sutton Ltd (‘CSL’) and its sole director and shareholder, Jeremy Sutton, have imported and sold replicas of the 1960s Shelby Cobra cars made by an American company, Superformance LLC, since 2021.

The trademark registrations
Acedes is the owner of AC COBRA (UK trademark No UK00905883806) for “automobiles, cars and sports cars”, filed on 23April 2007 (‘the AC COBRA registration’).

Ford is the owner of the marks COBRA (UK trademark No UK00000893168) for “motor land vehicles”, filed on 7 December1966, and COBRA (UK trademark No UK00902055416) for goods including “motor land vehicles”, filed on 25 January 2001(the ‘Ford COBRA registrations’).

What happened?
The claimants sued the defendants in 2022 for trademark infringement of the AC COBRA registration. The defendants denied infringement and counterclaimed for a declaration that the AC COBRA registration was invalidly registered and an order for revocation of the AC COBRA registration for non-use. In June 2023 the claimants served a notice of discontinuance of their infringement claim. This decision is concerned only with the issues arising from the counterclaim.

Decision
Application for invalidation
A declaration for invalidity, if granted, has effect ab initio and parties who may apply for a declaration are restricted to the proprietor of an earlier trademark and licensees of that mark. As well as considering whether there had been acquiescence by Ford in the use of the AC COBRA registration, Hacon J examined closely the chain of title from Ford of the Ford COBRA registrations, and whether these registrations, relied on in the application for invalidation, had met the use condition of Section 47 of the Trademarks Act. Hacon J concluded that the application for a declaration failed because CSL had never been a licensee of the Ford COBRA registrations and, therefore, did not have the locus standi to bring a declaration for invalidity.

However, Hacon J did find that the use conditions of Section 47 had been met, noting that “genuine use” has been considered by the courts, as multi-factorial and dependent on (among other things) the nature of the goods, so that a small quantity of goods “is more likely to qualify as genuine use where the goods are passenger airliners than where the goods are potatoes”. Use of the Ford COBRA registrations in the United Kingdom was established for the period from 29 June 2017 to 28 June 2022 by evidence that showed that Superformance sold about eight Shelby Cobra cars in the European Union and three such cars in the United Kingdom in the (undisputed) five-year period in question. Moreover, CSL had advertised Shelby Cobra cars on its website with Ford’s consent in this country and there was advertising in the European Union of Cobra-branded cars for sale through Ford dealerships in the European Union.

Revocation for non-use
As part of the revocation claim, a period of non-use was required to be nominated by the defendants, which in this case was from 23 November 2017 to 22 November 2022. The revocation claim ultimately rested on the defendants’ argument that, if it was found that there had been insufficient use of the Ford COBRA registrations during the period from 29 June 2017 to 28 June 2022 in relation to the invalidation claim, then there was no use of the AC COBRA registration. On this basis, as genuine use of the Ford COBRA registrations was found during the relevant period, Hacon J found this was sufficient to defeat the revocation claim.

Takeaway points
The COBRA registrations did have trademark venom.

Trademarks often have a complicated chain of title and, before embarking on disputes, a deep dive into ownership is essential. The failure of the invalidation claim resulted from a “missing link” in the chain.

A claim for revocation for non-use should be carefully pleaded and prosecuted. As Hacon J appreciated, there is no “catch all” amount of use which will decide a claim; consideration must be taken of the circumstances of the goods/services and of their use. Practitioners should take care to treat each registration on its own merits, in particular in cases where there are interlinked proceedings. Evidence of use for one mark may not satisfy the use requirements for another.

This article first appeared in WTR Daily, part of World Trademark Review, in August 2023. For further information, please go to www.worldtrademarkreview.com.