'Defender' name subject of trademark case

By Thomas Franz
BridgeTower Media Newswires

DETROIT-A trademark infringement case between two well-known brands was recently decided in federal court in Detroit.

Jaguar Land Rover sought $130 million in damages from Bombardier Recreational Products (BRP) for BRP's use of the brand name Defender for one of its off-road vehicles.

BRP won the case as the jury determined that there was little likelihood of confusion between BRP's off-road Defender and the Land Rover Defender that stopped being marketed to U.S. consumers in the late 1990s.

"We had to show that there was not a likelihood of confusion, and that's the essence of whether or not there was trademark infringement," said defense counsel Dean Amburn of Giroux Amburn PC in Southfield.

Background facts

Jaguar Land Rover had a U.S. trademark registration for Defender. They sued BRP, a Canadian company, primarily for trademark infringement.

The Land Rover Defender stopped being sold in the U.S. around 1997 because it did not comply with U.S. safety laws. Amburn said the vehicle did not meet the requirement to have an airbag on the driver and passenger side of the vehicle.

"They stopped selling it, and part of the claim that we had was they had abandoned the trademark, and therefore the trademark registration, because they were not using it in relation to the sale of the product for a long period of time," Amburn said.

BRP started using the name on an off-road vehicle called the Can-Am Defender, which is known as an off-road, side-by-side vehicle. It's only intended for off-road use, and you cannot get a license to drive it on the road, Amburn said.

"Our company did some internal research and decided on that as an appropriate name because it's kind of consistent with other names they've used for other products that they have," Amburn said. "When they started using it, Jaguar took exception and sued for trademark infringement."

Defense strategy

On top of defending BRP in the infringement case, Amburn said his side also alleged there was questionable activity on Jaguar's side as to how they maintained the trademark registration because the original Defender had not been sold for so long.

"With U.S. trademark registration, you periodically have to show in intervals that you are continuing to use it. Part of our allegation was they had committed a fraud on the U.S. Patent and Trademark Office by not properly maintaining it," Amburn said.

To illustrate the differences between the two products, Amburn pointed out that one is a motor vehicle that must comply with safety laws, while the BRP vehicle is strictly off-road with a different set of standards.

"Nobody would confuse one with the other. Neither product is inexpensive and the buyers who would consider these products are sophisticated. The prices are different, and they look different," Amburn said. "Those are all parts to considering if there would be a likelihood of confusion. All of those put together supported that there was not a likelihood of confusion."

Amburn said strong testimony from more than one expert helped made it clear that the products were different.

"That also included their failure to continue to use the trademark in relation to the sale of their product," Amburn said. "Their trademark is limited to station wagons and our product is an off-road vehicle."

The case went to a jury trial in January, and the jury determined that there was no trademark infringement, but they denied BRP's counterclaims of abandonment and fraud on the USPTO.

"I think also, it was significant still to the jury, even though they didn't find abandonment, that Jaguar Land Rover had not sold one of these vehicles new in the U.S. in 20 years. Although they're promising to reintroduce it sometime in the future, exactly when is unclear," Amburn said.

A similar case between the two brands also took place in the U.K., where Jaguar Land Rover was victorious.

Amburn said the issue of likelihood of confusion was not addressed by the U.K. court. The fact that the Land Rover Defender has been sold in the U.K. until recently was also key to the different ruling.

"The law is different in the U.K. Instead, just the fact that the name Defender was used by both companies was enough to reach a conclusion that there was a use of the same mark," Amburn said.

Plaintiff's counsel Frank Angileri did not respond to requests for comment on this case.

Published: Fri, Apr 12, 2019

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