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

The goods in respect of which the Ford Cobra Marks on the one hand and the AC Cobra Mark on the other are registered have “motor land vehicles” in common. I can treat them as having been registered in respect of identical goods.

The issue was whether AC COBRA is sufficiently similar to COBRA to give rise to a likelihood of confusion on the part of the average consumer. The principles to be drawn from the relevant case law were summarised by the Court of Appeal in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24, at [87]:

“(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f)

and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g)

a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h)

there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i)

mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k)

if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically linked undertakings, there is a likelihood of confusion.”

The defendants’ difficulty was that they filed evidence apparently with another target in mind: the claimants’ case on infringement, no longer pursued. Lance Stander is the owner and CEO of Superformance. He gave evidence about how the name “Cobra” is used in the market, including the UK. He said:

“…it is common for the market to describe replicas (including unauthorized replicas) as Cobras to identify the type, shape and ethos of the car…”

“…owners are typically using the Cobra brand generically to describe the type, shape and ethos of the car …”

“As to third parties who use the Cobra brand for replicas, they’re typically using it as a generic description of the shape.”

“The name AC Cobra merely explains that AC manufactures a car which is the shape of a Cobra.”

The defendants also filed evidence from Chris Theodore, a former Engineering Vice President at Ford, DaimlerChrysler and Chrysler Corporation. His evidence was that those in the market for Cobra cars, whether original cars or replicas, are wealthy enthusiasts aware of the two alternative sources of original cars and the alternative sources of replicas:

“The clue is in the name. A Shelby Cobra is produced by Shelby, an AC Cobra is produced by AC and a third party replica is produced by that third party.”

In Mr Lubinsky’s first witness statement for the claimants, served before the claimants abandoned their allegation of infringement, he stated his view that the “AC Cobra” brand is “incredibly strong” and that the defendants’ use of the Cobra sign will lead to confusion with the AC Cobra brand and will damage the brand. This was presented as being no more than his view. In his second witness statement, made after the claimants had withdrawn their case on infringement, he dealt with issues arising from the counterclaim and did not challenge the defendants’ evidence that “Cobra” alone is perceived by those in the market for the relevant types of car as a generic term denoting a type of car, not a trade source.

I must be guided by the evidence, notwithstanding what drove it and the reversing of motive as the proceedings progressed. On the defendants’ own evidence the sign “Cobra” is and was at relevant times a generic description of a type of car. Use of the AC Cobra Mark cannot have affected the essential function of either of the Ford Cobra Marks as a guarantee of origin (see, for example, Case C-206/01 Arsenal v Reed EU:C:2002:651) – to the extent that the latter were capable of functioning as trade marks in the first place. There can have been no likelihood of confusion as to origin. The defendants’ case in relation to s.5(2) of the 1994 Act is not made out.