Allegations of non-use of ‘AC Cobra’ trade mark dismissed

read time: 2 min

The Intellectual Property Enterprise Court (IPEC) recently assessed the legal right to register the sign ‘AC Cobra’ as a UK trade mark for cars. 

The case arose due to Acedes Holdings LLC and AC Cars initially alleging that Clive Sutton Limited (CSL)  and Mr Sutton, CSL’s sole director/shareholder, had infringed the ‘AC Cobra’ trade mark.

What is the ‘AC Cobra’ trade mark?

The mark ‘Cobra’ was first used in respect of an engine produced in the 1960s by Ford, that was installed into the modified chassis of a car produced by AC Cars. The car was run at Silverstone and went into production with the name ‘Cobra’. Some, though, were fitted with engines in England and were sold in this country and elsewhere in Europe as "AC Cobras".

Since 2021 CSL has imported and sold cars in the UK made by an American company, which are replicas of the Cobra cars made in the 1990s. These have been sold under the sign ‘Shelby Cobra’.

The claimants own and alleged infringement by the Defendants of the ‘AC Cobra’ mark, through their use of the sign ‘Shelby Cobra’. The defendants counterclaimed - claiming that the ‘AC Cobra’ mark was invalidly registered and should be revoked for non-use.

The outcome

The use conditions in section 47(2B) of the Trade Marks Act 1994 (“1994 Act”) were satisfied, so the allegation of non-use did not succeed. 

Nor was the ‘AC Cobra’ mark invalidly registered, having considered two earlier (arguably similar) registered trade marks owned by Ford. 

Section 47 (2)(a) of the 1994 Act states that the registration of a trade mark may be declared invalid, if there is an earlier trade mark within the meaning of section 6 of the 1994 Act. This is in relation to which the conditions set in any of section 5 (1), (2) or (3) of the 1994 Act obtain, for example:

  • That the later trade mark is identical or similar to an earlier mark and will be used for goods or services identical or similar to those for which the earlier trade mark is registered
  • As a consequence, there exists a likelihood of confusion on the part of the public.

What can we take away from this?

Registered trade marks assist businesses to protect their unique position in the market in which they operate. Here, for example, AC Cars was looking to ensure that customers could be confident about the trade origin and authenticity of  cars bearing the mark AC Cobra, or something confusingly similar. A business does this by having a registered trade mark and enforcing it against 3rd parties who wish to trade under the same or a confusingly similar mark, where confusion as to the trade origin of the goods/services bearing the contested mark is likely to arise. 

It’s important to ensure that a business is sufficiently protected by registering its brands and other intellectual property. If you need help with protecting your intellectual property assets, please contact the intellectual property team for further information.

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