JAGUAR - 146025

Administrative Decision Number146025
Date05 March 2004
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.
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,
2004 that I had decided to dismiss the opposition and to allow the mark to proceed
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,

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