Jaguar Land Rover Ltd. filed a trademark infringement suit on Monday, September 19, in a Michigan federal court against Bombardier Recreational Products Inc., a Canadian company that specializes in utility and recreational vehicles. JLR’s suit comes on the heels of January reports that their Land Rover DEFENDER series will no longer be produced after 68 years of production. JLR’s suit centers around their claim that although they do not plan to continue production of the DEFENDER series, Bombardier’s use of the "Defender" mark and name infringes upon JLR’s DEFENDER trademark. Jaguar argues they have maintained the mark since at least 1992 and its registration with the U.S. Patent and Trademark Office is enough to provide “conclusive evidence” of ownership. The suit states the DEFENDER mark is “favorably known throughout the United States,” a “symbol of [Jaguar’s] goodwill,” and “customers have come to associate and identify the JLR DEFENDER mark exclusively with JLR.” In addition, in response to Bombardier’s petition to cancel JLR’s DEFENDER trademark registration, JLR seeks a declaratory judgment from the Michigan court that it has not abandoned its DEFENDER mark.

The website of JLR provides a comprehensive view of its DEFENDER series SUV, including pictures, videos, specifications. The DEFENDER series includes hard and soft top models, models with pick-up style beds, and station wagons. The DEFENDER is built as a luxury, off-road SUV that could also be used for your family road trip.

DEFENDER series owners can also submit “journeys” online, where you can view pictures and captions of DEFENDER series SUV’s in action around the globe. For example, one can view the expedition Alvaro Gomez took in 1979 from Spain to Morocco in his Series III DEFENDER and the week-long trek taken by the Alberta Land Rover Enthusiasts through the Alexander Mackenzie Heritage Trail in the summer of 2015.

In contrast, Bombardier’s "Defender" series likely would not be thought of as an SUV. Produced in both 3- and 6-seater models, Bombardier’s website bills its "Defender" as ideal for working on a farm or ranch, hunting, or clearing snow, rather than performing as the vehicle of choice for a long trip like the Land Rover DEFENDER. Perhaps most importantly, Bombardier touts the performance of its "Defender" series, rather than the experiences it can provide.

It doesn’t appear that potential buyers of either the Land Rover DEFENDER or Bombardier’s "Defender" would face confusion over the two marks in light of the product differences. They appear to be targeted toward different audiences and serve different purposes. However, even though Jaguar Land Rover has ceased production of its DEFENDER series, it still actively promotes the culture surrounding the DEFENDER and wants to keep that experience alive. This will be a very interesting case to follow moving forward, as the Michigan court has important questions to decide regarding abandonment and non-competing target audiences.

Sources:https://www.law360.com/ip/articles/841678/land-rover-sues-canadian-vehicle-co-over-defender-mark http://www.telegraph.co.uk/cars/news/end-of-the-road-for-the-land-rover-defender/ https://www.law360.com/dockets/download/57e02f5adda60839d9000009?doc_url=https%3A%2F%2Fecf.mied.uscourts.gov%2Fdoc1%2F09718868835&label=Case+Filing (Page 3). http://www.landrover.com/vehicles/defender/index.html http://can-am.brp.com/off-road/defender.html

For more information on this topic, please visit our Trademark Litigation service page, which is part of our IP & Business Litigation practice. 

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the trademark law firm and its trademark litigation attorneys may be found at www.klemchuk.com.

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