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

The defendants submitted that if use of the Ford Cobra Marks licensed by Ford over Period 2 was sufficient for s.47(2B) of the 1994 Act, it was sufficient for s.48(1)(a). Period 2 was between 29 June 2017 and 28 June 2022, a sufficient overlap with the claimant’s nominated five years for s.48(1)(a), 13 May 2017 to 12 May 2022, for the squeeze to be run. I have found that there was sufficient use for Period 2 and so I accept that there was enough use in the s.48(1)(a) period for Ford to have acquiesced, subject to its being aware of such use.

There was in evidence correspondence from M. Neil Cummings & Associates, lawyers acting for Carroll Shelby Licensing, Inc and Shelby American, Inc to AC Cars objecting to the use of the Ford Cobra Marks by the defendants in the UK, use in the form of AC Cobra. The letters are signed by Mr Cummings. Mr Stander stated in his first witness statement that he was informed by Mr Cummings that this correspondence was written with the permission of Ford.

On 4 January 2017 M. Neil Cummings & Associates wrote:

“It has come to this office’s attention that AC Cars (England) Ltd is making unauthorized use of Shelby’s trademarks and/or intellectual property rights. Such trademarks and intellectual property being misused by AC Cars included… the “Cobra® word mark (owned by Ford Motor Company…). This office holds evidence of such misuse in the form of the enclosed pages taken from AC Cars’ website.”

The enclosed webpages referred to show AC COBRA vehicles, specifically the 2017 AC COBRA 378, being promoted and advertised for sale in 2017.

Acedes’ solicitors sent a reply on 17 January 2017, which included this:

“Our client considers that it is well within its rights to conduct the activities complained of, as it is the proprietor of numerous intellectual property rights … including registered trade marks for the AC COBRA …our client cannot and will not comply with the demands set out in your letter”.

On 19 August 2020 M. Neil Cummings & Associates wrote again to AC Cars:

“It has come to this office’s attention that AC Cars (England) Ltd is making unauthorized use of Shelby’s trademarks and/or intellectual property rights. Such trademarks and intellectual property being misused by AC Cars included… the “Cobra® word mark (owned by Ford Motor Company…). This office holds evidence of such misuse in the form of the enclosed pages taken from AC Cars’ website.”

The enclosed webpages show AC COBRA vehicles (specifically the AC COBRA Series 1 electric) being promoted and advertised for sale in 2020.

A response was sent on behalf of AC Cars by Mishchon de Reya, solicitors, on 20 August 2020 which concluded:

“My client has no intention of ceasing its current activities.”

There was no express evidence that the responses on behalf of AC Cars were passed back to Ford. But since Ford gave its permission to send the letters of complaint, it is likely that they were told of the replies. The letter of 19 August 2020 shows that the earlier letter of 4 January 2017 did not stop AC Cars’ use of the Cobra mark complained of, so Ford was presumably aware of that. Moreover, Ford opposed the application to register the AC Cobra Mark before the EUIPO. A decision of the EUIPO Board of Appeal dated 4 July 2012 refers to evidence provided by Ford in those proceedings of use of the sign AC Cobra by Acedes, which in practice must have meant AC Cars. I think that on the balance of probabilities, Ford was aware of the defendants’ use of the AC Cobra Mark. Acquiescence by Ford is established.