In a previous article, we discussed if it was possible to trademark a three dimensional shape following the recent decision in the case of London Taxi Corp Ltd v Frazer-Nash Research Ltd. See Trademarking Shapes: London taxi case affirms position.
This case highlighted how difficult it can be to protect a 3D shape through the means of a registered trademark [for those not up to speed, the case concerned protecting the shape of the London taxi cab]. Looking at the issues raised in this matter can provide assistance in understanding exactly what is required, particularly in the context of vehicles.
In the past few months, there has been an abundance of disputes between car manufacturers wishing to protect their designs. Jaguar…
Therefore, considering the trademarking of vehicles, the following questions were posed in order to establish when it may be possible:
1. Can distinctiveness be acquired?
It is possible for distinctive character to be acquired. Looking at the Kit Kat case, in order to acquire distinctive character, those wishing to register the mark would need to show that a “significant proportion of the relevant class of persons perceives the relevant goods… as originating from…” the shape.
Although the London black taxi cab is no doubt iconic, this was not enough to constitute its shape being distinctive.
2. Who was the end user?
The requirement of a shape being ‘sufficiently distinctive’ is to protect consumers, thereby allowing them to distinguish between different products. This assessment is based on the perspective of the ‘average consumer’. When it comes to taxis, it must be considered whether the average consumer is the taxi owner, purchasing the car, or the customer riding in the taxi
The case distinguished between ‘consumers and ‘end users’. The former being the owners of the taxis and the latter being the customers who are consumers of taxi services as opposed to the product itself. As such, the end users could not be taken into consideration when considering the perspective of the average consumer.
It was noted, that a hirer could be considered a consumer, although this was not a concern in the present facts of the case.
3. Can the ‘substantial value’ attached to shape effect its ability to be registered as a trademark?
Under Article 3 of Council Directive 2008/95/EC, a trademark shall be refused registration on the grounds that such shape “gives substantial value to the goods”. Notwithstanding in the present case, due to the London cab’s iconic status, the judge stated that should the question of substantial value be critical to the appeal, this matter would have been referred to a higher court.
Therefore, this leaves the floor open to see how this may be interpreted in future cases, particularly where there may also be registered designs.
Should you wish to discuss trademarks or intellectual property rights, please contact a member of the Advisory and Dispute Resolution team of EHL Commercial Law on 0330 024 9643.