High-performance and luxury car specialist Clive Sutton, has successfully defended a claim for trademark infringement brought in 2022 by Acedes Holdings, a holding company incorporated in St Kitts & Nevis that operates the AC Cars brand.
In 1962, Carroll Shelby conceived of and developed the famous Cobra sports car. Today, the cars are made under licence from Ford Motor Company and Carroll Shelby Licensing, who remain custodians of the Cobra brand. Clive Sutton is the UK exclusive distributor of the Shelby Cobra.
In May 2022, Acedes Holdings, brought a claim against Clive Sutton for trade mark infringement and passing off, seeking an injunction preventing Clive Sutton from using the Shelby Cobra brand.
With the support of Carroll Shelby Licensing and Superformance, Clive Sutton defended the claim and counterclaimed. Faced with Carroll Shelby’s legacy and clear facts regarding the ownership of the Cobra brand, Acedes Holdings ultimately withdrew its claims in June 2023, with Clive Sutton free to use the brand. The counterclaim made by Clive Sutton over the validity of Acedes Holdings’ trade mark was subsequently dismissed by the court.
Clive Sutton is now the only authorised importer of continuation and replica Shelby Cobra cars. These are the only Cobra cars to be made under licence by 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.
Clive Sutton, founder and CEO: “Our customers and partner businesses are delighted by the outcome of the case. The Shelby Cobra has a rich heritage and we are delighted to be able to offer these models to our enthusiastic and knowledgeable customers in the UK. Receiving the backing of Carroll Shelby Licensing highlighted the historical significance of the brand to both companies and now we’re keen to present these special sports cars to our customers without restriction.”
Case detail
On 19 May 2022, Acedes Holdings (a holding company incorporated in St Kitts & Nevis) commenced proceedings in the English Intellectual Property Enterprise Court alleging that the Shelby Cobra cars were infringing its trade mark for AC Cobra. Its group company also separately alleged that the Shelby Cobra cars infringed its UK registered designs.
Clive Sutton, working with the Carroll Shelby Licensing and Superformance, robustly defended the allegations, with separate registered design invalidity proceedings being commenced in the UK Intellectual Property Office. Clive Sutton also counterclaimed that the AC Cobra trademark was invalid.
Shortly before trial, in June 2023, Acedes Holdings withdrew all of its claims against Clive Sutton for trade mark infringement. Subsequently, the UK IPO concluded that the UK registered designs of Acedes Holdings’ group company were invalid, with the designs to be revoked. This enables Clive Sutton to continue to sell the continuation and replica Shelby Cobra cars in the United Kingdom.
In addition to being the only licensed importer of Shelby Cobra cars, Clive Sutton represents US-based creator of replica vehicles Superformance. Again operating under licence by Shelby American, Superformance create a range of faithfully recreated MkII and MkIII models that benefit from modern production, powertrain and components.
*Article Source www.vcomm.co.uk
