Clive Sutton legal challenge over Cobra brand dismissed by High Court

Clive Sutton legal challenge over Cobra brand dismissed by High Court

Time Stamp: August 11, 2023 7:35 AM
Source Node: 2207017

AC Cars is claiming victory in a bitter branding dispute after a High Court judge threw out a counter claim by London-based luxury car dealership Clive Sutton which had challenged the British marque’s rights to its UK-registered AC Cobra trade mark.

AC Cars had argued that the dealer should not have advertised the imitation models Clive Sutton had imported in late 2021 and early 2022 as 1965 Cobras. Clive Sutton went on to issue a counter claim, alleging that AC Cars’ trade mark of the AC Cobra name had been made invalid due to Ford’s claimed prior rights and non-use by AC Cars.

The imported cars at issue were recently manufactured in South Africa with the bodies exported to the United States for engine fitting before being registered there as kit cars in the year of the car that they represented – which is legal in that country.

UK rules however state that cars must be registered in the year of manufacture as different rules apply in terms of certification, VAT and duty for historic cars.

Clive Sutton has hit back, pointing out that in fact AC Cars was not victorious in its own legal challenge which in May 2022 saw Acedes Holdings and its licensee AC Cars launch trade mark infringement and passing off proceedings as a result of the dealer’s use of the Shelby Cobra brand.

As part of the claim, AC Cars sought an injunction preventing Clive Sutton from using the Shelby Cobra sign although Clive Sutton successfully defended the infringement and passing off claim, with Acedes withdrawing it shortly before trial in June.

The dealer points out that AC Cars retains the UK trade mark of AC Cobra name while Clive Sutton will continue to use the Shelby Cobra brand under licence from Ford and Carroll Shelby Licensing which supported the case.

Clive Sutton is now the only authorised importer of continuation and replica Shelby Cobra cars under licence from Ford and Carroll Shelby Licensing. “In parallel proceedings, the registered designs for the shape of the Cobra sports car were held to have been invalidly registered by Acedes Holdings’ group company and revoked,” it added.

The dealer confirms it sought to have the AC Cobra trade mark removed from the trade marks register due to non-use, although this was rejected in the final ruling by the judge Richard Hacon. “Following Acedes Holdings’ withdrawal of its claim for infringement and passing off, a complimentary counterclaim was warranted,” said Clive Sutton.

AC Cars, which claims to be Britain’s oldest active vehicle manufacturer since its establishment in 1901, unveiled the AC Cobra GT Roadster (pictured) in April. Even its pedigree emerged as an issue in the proceedings, according to Clive Sutton. “Acedes Holdings was required to establish that it was the successor in title to AC Cars – the car manufacturer from the 1960s,” it countered. “As a result of the withdrawal of its claim, it did not do so. For the avoidance of doubt, AC Cars (England) was incorporated in 2016.”

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