In an interesting recent decision concerning the iconic London black cab shape (The London Taxi Corporation Ltd (LTC) v Frazer-Nash Research Ltd & Anor (Frazer-Nash)), Arnold J in the High Court of England and Wales has found comprehensively for the defendant, Metrocab manufacturer Frazer-Nash. Claiming Frazer-Nash’s new Metrocab was too similar in appearance, LTC sued Frazer-Nash for both passing off and infringement of CTM and UK trade mark registrations for the London black cab shape. Arnold J held that the Metrocab was dissimilar enough in appearance from LTC’s cabs as used and as covered by the trade mark registrations that there was therefore no infringement. J Arnold then went further and held both of LTC’s trade mark registrations to be invalid. The remainder of this blog focusses on the decision on invalidity.
Trade marks lack inherent distinctiveness
Arnold J held that both the CTM and UK trade mark registrations for the London black cab shape lacked inherent distinctiveness. This decision was based on the notion that the London black cab shape would be perceived by consumers as merely a variation on the typical shape of a car and would not be perceived as identifying the origin of the goods. This aspect of the decision is unsurprising as three dimensional trade marks can be difficult to register on the basis they are inherently distinctive, often requiring evidence of distinctiveness acquired through use.
Trade mark has not acquired distinctive through use
LTC had succeeded in registering the London black cab shape as a trade mark in the United Kingdom on the basis the shape had acquired distinctiveness as a trade mark through use. Arnold J, on reviewing evidence filed by LTC, held that the mark should not have been registered on these grounds and had not in fact acquired distinctiveness through use.
In setting out the test for acquired distinctiveness J Arnold relied on his own recent judgment in the controversial KITKAT case (Société Des Produits Nestlé SA v Cadbury UK Ltd  EWHC 50 (Ch)) in which he held that “the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceived the relevant goods or services as originating from a particular undertaking because of the sign in question.” Please see our comments on that case here.
In applying the test above, Arnold J first noted that relevant consumers were taxi drivers (being the people who buy taxis), rather than consumers of taxi services, as argued by LTC. Reviewing the evidence, Arnold J considered that while LTC had demonstrated the shape of its taxis was well known and regarded with affection, it had crucially not demonstrated that taxi drivers perceive taxis as emanating from LTC because of their shape as opposed to the conventional trade marks under and by reference to which the vehicles are sold. Arnold J went on to say that even if, as LTC had argued, the relevant consumers were consumers of taxi services, while LTC had demonstrated such people recognised the shape of its taxis as indicating they were licensed London taxis, they would not associate the shape with LTC as the manufacturer.
Shape trade mark non-registrable because shape adds value
Arnold J also held that both the CTM and UK trade mark registrations were invalid on the basis of Article 3(1)(e)(iii) of the Trade Marks Directive, which provides that a trade mark is not registrable where it consists exclusively of a “shape that gives substantial value to the goods”. This decision is of some significance because a shape deemed to add substantial value can never acquire distinctiveness as a trade mark through use. Arnold J cited the CJEU case C-205/13 Hauck GmbH & Co KG v Stokke A/S, in which it was held that a key purpose of this provision was to ensure that trade mark rights were not used to extend the time-limited protection granted under other intellectual property rights (please see our previous bloghere). Arnold J noted that LTC’s taxi shape could, and in fact had, been protected as a registered design. Arnold J further noted that to be disqualified under this provision, it is not necessary that the shape is the only element of the product that gives value and that shape itself must add the value, rather than any goodwill associated with the shape.
Applying the above, Arnold J held that the mark was not registrable because in his opinion the London black cab shape did add value to the taxis. Arnold J considered it to be well recognised that aesthetics are part of the appeal of cars, and that consumers recognised the shape as that of a licensed London taxi, thus placing value on it. It appears the high level of recognition of the London black cab shape hindered, rather than helped LTC here. Arnold J saw the consumer recognition of the shape of the taxis as indicating to the consumer that they were licensed London taxis to be distinct from any goodwill LTC’s might have had in the shape of the taxis (ie association in the minds of consumers between the shape and LTC as a manufacturer).
This decision is further evidence that the courts in the United Kingdom are now setting a high bar on acquired distinctiveness for three dimensional trade marks. It is also a reminder that even a very high level of recognition will not be enough to register a three dimensional trade mark unless the relevant consumer perceives the relevant goods as originating from a particular undertaking because of the sign in question. In fact, high levels of recognition where this association is not made, can even hinder efforts to register three dimensional trade marks on the basis the shape adds value.
There are indications the KITKAT decision, relied on here by Arnold J in his interpretation of the law on acquired distinctiveness, will be appealed. It will be interesting to see if this decision will also be appealed, although a different interpretation of the law on acquired distinctiveness will not necessarily help LTC secure a registration as they would also need to overcome the hurdle that the London black cab shape adds substantial value to the taxis.
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