IP-2022-000036 - [2023] EWHC 2005 (IPEC)

It was common ground that the two periods relevant for use of the Ford Cobra Marks were, chronologically, from 1 November 2001 to 31 October 2006 (which I will call “Period 1”) and from 29 June 2017 to 28 June 2022 (“Period 2”).

As I have indicated, an exception arises where, at the date of filing of the later mark or, where applicable at the priority date of the later mark, the 5 years period within which the earlier trade mark should have been put to genuine use, in which case Period 1 is to be disregarded and genuine use need only be established for Period 2. It was agreed that the exception arises in respect of the second Ford Cobra Mark, so genuine use of that mark had to be established only over Period 2.

It was also agreed that because the second Ford Cobra Mark started life as an EU trade mark, use throughout the EU between 29 June 2017 and 31 December 2020 (IP Completion Day) (“the EU Period”) is to be taken into account. Thereafter, from 1 January 2021 to 28 June 2022, only use in the UK counts for that Mark.

With regard to Period 1, the defendants relied on the 1996 Licence, referred to above, in force as of 6 December 1996, by which Ford licensed A.C. Car Group Limited to sell cars under the AC Cobra sign. Mr Lubinsky said that 37 of the AC Cobra Mark IV CRS models were built and sold under that licence. They were launched in 1999 and sold over the next three or four years, so until 2002 or 2003. There were therefore sales of cars under the Cobra sign with the consent of Ford after 1 November 2001 and within Period 1. I am satisfied that such sales constituted real commercial exploitation of the Ford Cobra Marks, sales which were qualitatively sufficient, particularly having regard to the nature of the products, namely expensive motor cars.

The defendants also relied on advertising in the UK of chassis for the Shelby AC 289 Cobra and Shelby AC 427 Cobra cars in the relevant period. However, Mr Lubinsky said that these cars were intended solely for export to the US, so it is unlikely that Ford consented to their being advertised in the UK. Either way, advertising in the UK was apparently not done to create a share in the UK market because AC Cars was serving only the US market. There was also evidence of one page from a website to evidence sales by a company called Le Mans Coupes Ltd. It was not made clear that this website was online before 1 November 2006 or that the advertising was done with the consent of Ford.

I find that the use conditions of s.47(2B) were satisfied in relation to both Ford Cobra Marks for Period 1, but only because of the sales of AC Cobra Mark IV CRS cars.

Turning to Period 2, the defendants filed evidence to show that Superformance sold about 8 Shelby Cobra cars in the EU in a period which very substantially overlapped the EU Period and sold 3 such cars in the UK in a period which very substantially overlapped Period 2 as a whole. It is more likely than not that the overlapping was such that this constituted use of the Ford Cobra Marks within Period 2. Also, CSL advertised Shelby Cobra cars on its website and in publications after September 2021, so for the last 9 months or so of Period 2.

The claimants’ counsel emphasised that to qualify as genuine use, a mark must be used to maintain or create a share in the market for the goods and services in question, see Walton International, above, at [115(5)] and [115(6)]. He drew a distinction between, on the one hand, use which results from sales by the trade mark proprietor or its licensee solely in response to orders made overseas, sales which are not conducted with the intention on the part of the proprietor or licensee to maintain or create a share of the market, and on the other hand use in the form of sales consciously intended to maintain or expand a share of the market. In other words, a pull versus push distinction. The distinction is a valid one, but sometimes will not be clear cut. Where the goods in question are cheap and the total value of their sales abroad is small, it may be easy to infer objectively that the proprietor or licensee which supplied them had no interest in the export market in question, notwithstanding adventitious sales there. Where, as here, the goods are costly, the profit from a few sales is liable to be significant and of interest to the proprietor or licensee. It will be harder to say that the sales have not first kindled, and then been made because of, an interest in developing the market in question to the extent that it can be done.

On balance I am not satisfied that I can dismiss the sales of 8 or so cars in the EU on the ground suggested by the claimants. I am also not satisfied that I can dismiss the 3 or so sales in the UK. There was also evidence of advertising of advertising by CSL of Shelby Cobra cars for sale with Ford’s consent in this country and advertising in the EU of Cobra branded cars for sale through Ford dealerships on the EU, both within Period 2. I find that the use conditions of s.47(2B) were satisfied in relation to both the First and Second Ford Cobra Marks during Period 2.