Acedes Holdings, LLC & Anor v Clive Sutton Ltd & Anor [2023] EWHC 2005 (IPEC) (07 August 2023)

Acedes Holdings, LLC & Anor v Clive Sutton Ltd & Anor [2023] EWHC 2005 (IPEC) (07 August 2023)

The defendants lacked standing to seek invalidity of the AC Cobra Mark because they were not licensees under the relevant Ford Cobra Marks at the date of the counterclaim; the chain of licences was defective and did not cover the UK marks. Even if standing existed, there was no likelihood of confusion or reputation established for the Ford marks at the relevant date, and the use of 'Cobra' was generic in the relevant market. The counterclaim for invalidity and revocation fails.

Citation
[2023] EWHC 2005 (IPEC)
Parties
Claimant: Acedes Holdings, LLC; Claimant: AC Cars (England) Limited; Defendant: Clive Sutton Limited; Defendant: Clive Jeremy Sutton
Jurisdiction
England and Wales
Judgment Date
07 August 2023
Procedural Posture
Intellectual Property (trade Mark) Counterclaim / Judgment After Trial of Counterclaim
Outcome
Counterclaim dismissed
Legal Topics
Trade Mark Validity, Trade Mark Revocation for Non Use, Standing to Seek Invalidity, Genuine Use, Likelihood of Confusion, Reputation and Unfair Advantage, Acquiescence
Intellectual Property Trade Marks Trade Mark Validity Trade Mark Revocation for Non Use Standing to Seek Invalidity Genuine Use Likelihood of Confusion Reputation and Unfair Advantage +1 more

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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) Counterclaim / Judgment After Trial of Counterclaim

Legal Issues

  1. 1 Whether the defendants had standing as licensees to seek invalidity of the AC Cobra Mark under s.47(2) of the Trade Marks Act 1994
  2. 2 Whether the AC Cobra Mark was invalidly registered under s.5(2) and/or s.5(3) of the Trade Marks Act 1994 due to earlier Ford marks
  3. 3 Whether the AC Cobra Mark should be revoked for non-use under s.46(1) of the Trade Marks Act 1994

Ratio Decidendi

The defendants lacked standing to seek invalidity of the AC Cobra Mark because they were not licensees under the relevant Ford Cobra Marks at the date of the counterclaim; the chain of licences was defective and did not cover the UK marks. Even if standing existed, there was no likelihood of confusion or reputation established for the Ford marks at the relevant date, and the use of 'Cobra' was generic in the relevant market. The counterclaim for invalidity and revocation fails.

Court Disposition

Counterclaim dismissed

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