Take a Closer Look Next Time you Flag a Black Cab…

By Briony Pollard and Serena Totino

Last month, a quintessential London symbol was subject to the scrutiny of the Hon. Mr. Justice Arnold in a case concerning Community and UK trade marks for the iconic shape of the black London taxi cab in Class 12 (the Trade Marks), owned by The London Taxi Corporation Limited (LTC).

LTC claimed that Frazer-Nash Research Limited and Ecotive Limited (FNR) had intended to deceive the public as to the origin of the Metrocab, a new model of the London taxi. LTC argued that a result of FNR adopting the specific shape it had for the Metrocab, was that consumers would think that it emanated from the same source as LTC’s taxis. As such, FNR threatened to infringe the trade marks and to commit passing off by marketing the Metrocab. FNR contended that the trade marks were invalidly registered because they lack distinctive character and give substantial value to the goods.

In its decision (available here), the Court rejected LTC’s argument that the relevant public was members of the public who hire taxis. Rather, it identified the relevant public as taxi drivers. Given the design differences between the Metrocab and LTC’s taxis, there was no evidence that taxi drivers would be more likely to purchase the Metrocab if passengers thought that it originated from the same source of LTC’s taxis. The Court noted that even if the relevant public were consumers of taxi services, the identity of the manufacturer is a matter of indifference to them.

The Court made clear that a fancy shape is not enough to confer an inherent distinctive character. Neither of the Trade Marks could be regarded as sufficiently departing significantly from the norm because they would be perceived by the average consumer of taxis as a mere variation of the typical shape of a car.

The Court further held that both trade marks should be declared invalid on the ground that that they consist exclusively of the shape which gives substantial value to the goods i.e. the shape’s aesthetic characteristics constitute one of the principal elements determining the market value of the product concerned, which is at the same time one of the reasons for the consumer’s decision to purchase.

The fact that the UK Trade Mark shape had also been registered as a design (and the Community Trade Mark could have been) was relevant, in light of the fact that Article 3(1)(e)(iii) of the Trade Mark Directive aims to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights (e.g. design rights) which the legislature has sought to make subject to limited periods.

Factors which led to this conclusion included the fact that the shape of the LTC London taxi is one that consumers place value on – the average consumer in the UK would recognise the shape as that of a London taxi, the fact that LTC’s own case and evidence emphasised the appearance of the taxis and the dissimilarity of the shape of the taxis when compared to that of other cars in common use.

The Court held that the Community Trade Mark should be revoked for non-use because LTC had failed to establish genuine use. LTC’s evidence of use was based on the sale of old taxis for second hand use and for scrap.

Despite finding both marks invalid and the Community Trade Mark subject to revocation, the Court went on to proffer judgment on infringement, finding that there was no likelihood of confusion among the average consumers – taxi drivers. In any event, FNR would have a defence to infringement as FNR’s use of the sign does not amount to unfair competition with LTC and is in accordance with honest practices.  Unsurprisingly, LTC’s case for passing off also failed as LTC failed to establish that those features denote a particular source of London taxis.

This decision illustrates the ongoing challenges of protecting and enforcing shape trade marks in the UK and EU, and demonstrates the importance of trade mark owners adopting strategies to educate the public that the shape of their products designates origin (and not just the conventional word or figurative elements).

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