JAGUAR - 146025

• Administrative Decision Number: 146025
• Date: 05 March 2004
• opponent: JAGUAR CARS LIMITED and THE JAGUAR COLLECTION LIMITED

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TRADE MARKS ACT, 1963

Decision in Hearing under Section 26

IN THE MATTER OF an application for registration of Trade Mark No. 146025 and

in the matter of an Opposition thereto.

MANUFACTURE DES MONTRES JAGUAR S.A. Applicant

JAGUAR CARS LIMITED and

THE JAGUAR COLLECTION LIMITED Opponents

The application

1. On 4 December, 1991, MANUFACTURE DES MONTRES JAGUAR S.A., a

Joint Stock Company incorporated under the laws of Switzerland, c/o Pierre–

André L’Epée, 3 Rue Louis-Favre, 2000 Neuchâtel, Switzerland, Watch

Manufacturers and Agents, made application (No. 91/6050) to register the word

“JAGUAR” as a Trade Mark in Part A of the Register in Class 14 in respect of the

following goods:

“watches and parts thereof”

2. The Application was subsequently advertised as accepted for registration in Part A

of the Register under No. 146025 in Journal No. 1717 on 22 September, 1993.

3. Notice of Opposition to the registration of the mark pursuant to Section 26 of the

Act was filed on 4 November, 1993 by JAGUAR CARS LIMITED and THE

JAGUAR COLLECTION LIMITED, both British companies of Browns Lane,

Allesley, Coventry CV5 9DR, England. The Applicant filed a counter-statement

on 4 February, 1994 and evidence was, in due course, filed by the parties under

Rules 37, 38, 39 and 40 of the Trade Mark Rules, 1963.

4. The Opposition became the subject of a Hearing before me, acting for the

Controller, on 19 December, 2003. The parties were notified on 25 February,

2004that I had decided to dismiss the opposition and to allow the mark to proceed

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to registration. I now state the grounds of my decision and the materials used in

arriving thereat.

Notice of Opposition

5. In their Notice of Opposition the Opponents cite a number of facts and grounds of

opposition, which may be summarised as follows:

(i) Jaguar Cars Limited is the proprietor of the internationally renowned trade

marks JAGUAR and a device of a jaguar, which marks are synonymous

with high quality products including motor vehicles, articles of sports

clothing, games, playthings, gymnastic and sporting articles, spectacles,

sun-glasses, spectacle frames, articles of leather or imitation leather, bags,

handbags, purses and watches.

(ii) The Jaguar Collection Limited is a wholly owned subsidiary of Jaguar

Cars Limited with particular responsibility for the marketing and sale of

non-automotive products under the JAGUAR trade marks.

(iii) Because of the international reputation of the JAGUAR trade marks and

their association with Jaguar Cars Limited, use by the Applicant of the

trade mark JAGUAR is likely to deceive or cause confusion and would

lead to the Applicant’s goods being passed off as those of the Opponents.

(iv) Jaguar Cars Limited have used the JAGUAR trade marks in relation to

watches and other horological instruments for many years and use by the

Applicant of the trade mark JAGUAR in relation to watches will lead to

confusion, deception and passing-off.

(v) The mark that the Applicant has sought to register would be disentitled to

protection in a court of law and registration would, therefore, be contrary

to the provisions of Section 19 of the Act.

(vi) The Opponents are the registered proprietors, or applicants for registration,

of a number of trade marks (details provided) containing the word

“JAGUAR” or the device of a jaguar and registered, or applied for, in

Classes 9, 12, 18, 25, 28 and 37.

(vii) The mark that the Applicant has sought to register resembles the marks

that are the subject of the Opponents’ earlier registrations and applications

and the respective goods are goods of the same description; accordingly,