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

This is an action about the right to use the sign “Cobra” for cars. In 1962, at the instigation of the American racing driver Carroll Shelby and his team in Los Angeles, an engine provided by The Ford Motor Company (“Ford”) was installed in the modified chassis of a car produced by a firm called AC Cars at its factory in Thames Ditton, Surrey. The resulting sports car, or roadster, was run at Silverstone in January 1962 and then shipped without an engine to Los Angeles. Subsequently, cars with the AC Cars chassis and a Ford engine went into production under the name “Cobra”, chosen by Mr Shelby.

For the most part the cars were made to the order of Mr Shelby’s company, Shelby American, Inc, with the car bodies being shipped from Thames Ditton to California where they were fitted with Ford engines and sold by Shelby American as “Shelby Cobras”. Some, though, were fitted with engines in England and were sold in this country and elsewhere in Europe as “AC Cobras”.

In 1996 the first claimant (“Acedes”) acquired some of the assets of AC Cars’ business, including intellectual property rights and goodwill relating to “AC Cobra”. Since 2016 the second claimant (“AC Cars”) has made cars in the UK and sold them under the name “AC Cobra”. Acedes has registered UK trade mark no. 905883806 in the form of the words AC COBRA (“the AC Cobra Mark”).

The first defendant (“CSL”) markets cars in the UK. The second defendant (“Mr Sutton”) is CSL’s sole director and shareholder. Since 2021 CSL has imported and sold cars made by an American company, Superformance LLC (“Superformance”). They are replicas of the Shelby Cobra cars of the 1960s and have been sold under the sign “Shelby Cobra”.

The claimants complained to CSL and on 13 May 2022 issued the claim form in these proceedings, alleging infringement of the AC Cobra Mark. The defendants denied infringement and counterclaimed for a declaration that the AC Cobra Mark was invalidly registered and an order for revocation of the AC Cobra Mark for non-use.

On 6 June 2023 the claimants served a notice of discontinuance of their infringement claim, so the present trial was concerned only with the issues arising from the counterclaim.