Acedes Holdings, LLC & Anor v Clive Sutton Limited & Anor

Acedes Holdings, LLC & Anor v Clive Sutton Limited & Anor

The defendants lacked locus standi as they were not licensees under the Ford Cobra Marks at the relevant time, so their application for invalidity failed. Even if locus standi existed, there was no likelihood of confusion or reputation for the Ford marks, and Ford had acquiesced in the use of the AC Cobra Mark. The revocation for non-use also failed as there was sufficient use.

Parties
Claimant: Acedes Holdings, LLC; Claimant: AC Cars (England) Limited; Defendant: Clive Sutton Limited; Defendant: Clive Jeremy Sutton
Jurisdiction
England and Wales
Judgment Date
11 September 2024
Procedural Posture
Intellectual Property Trade Mark / Judgment After Trial on Counterclaim
Outcome
Defendants' counterclaims dismissed; claimants' infringement claim abandoned.
Legal Topics
Trade Mark Validity, Trade Mark Revocation, Trade Mark Licensing, Acquiescence, Genuine Use, Likelihood of Confusion
Intellectual Property Law Trade Mark Validity Trade Mark Revocation Trade Mark Licensing Acquiescence Genuine Use Likelihood of Confusion

Case Brief

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Parties

Acedes Holdings, LLC

Claimant

AC Cars (England) Limited

Claimant

Clive Sutton Limited

Defendant

Clive Jeremy Sutton

Defendant

Procedural Posture

Intellectual Property Trade Mark / Judgment After Trial on Counterclaim

Legal Issues

  1. 1 Whether the AC Cobra Mark was invalidly registered under s.5(2) and/or (3) of the Trade Marks Act 1994 due to earlier Ford marks
  2. 2 Whether the AC Cobra Mark should be revoked for non-use under s.46(1) of the Trade Marks Act 1994
  3. 3 Whether the defendants had locus standi as licensees under the Ford Cobra Marks

Ratio Decidendi

The defendants lacked locus standi as they were not licensees under the Ford Cobra Marks at the relevant time, so their application for invalidity failed. Even if locus standi existed, there was no likelihood of confusion or reputation for the Ford marks, and Ford had acquiesced in the use of the AC Cobra Mark. The revocation for non-use also failed as there was sufficient use.

Court Disposition

Defendants' counterclaims dismissed; claimants' infringement claim abandoned.

Orders

  • Defendants' application for declaration of invalidity of the AC Cobra Mark dismissed.
  • Defendants' application for revocation of the AC Cobra Mark for non-use dismissed.