Following Nestlé’s Kit Kat battle, London Taxi 3D shape is also declared invalid

In a recent decision of the High Court (‘the Court’) in The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and another the trade marked 3D shapes of London taxis were held to be invalid, on the basis that they were not distinctive and consisted of a shape which gave substantial value to the goods.

The claimant (the current manufacturer of models of London taxis) owned both UK and Community 3D registered trade marks in relation to class 12 ‘motor vehicles’, based on the appearance of the London taxis. The claimant also owned a UK registered design, which consisted of the same graphical representations as the UK trade mark, although this was not relied on in this case.

The claimant brought proceedings for trade mark infringement and passing off against the defendants as a result of their launch of the new ‘Metrocab’ taxi model. The defendants counterclaimed that the claimant’s trade marks were invalid.

Arnold J applied the European Court’s guidance in Nestle SA v Cadbury UK Ltd (see our previous update on this case) to determine if distinctive character had been acquired by a graphical sign. In this case, he found that there was no direct evidence to support the position that the average taxi driver recognised the claimant’s goods because of the graphical sign alone. Further, he held that the average consumer of taxi services would view the claimant’s trade marks as a variation of the typical shape of a taxi and would not recognise any specific origin of the goods.

In looking at whether the trade marks consisted exclusively of the shape which gave substantial value to the goods so as to be invalid, Arnold J suggested that if a 3D trade mark could be protected by other IP rights, such as registered designs, this would fall within the grounds for invalidity under Article 3(1)(e)(iii) of the Trade Marks Directive 2008/95/EC.

For these reasons the Court considered that the claimant’s trade marks were invalid, and even if these trade marks were valid, they had not been infringed by the defendant’s new taxi as the degree of similarity between the marks and the resulting likelihood of confusion was low.

This case again highlights the difficulty of successfully registering 3D shape trade marks. An applicant will need to demonstrate that these shapes alone must indicate the origin of the relevant goods to consumers, without reference to any associated registered word or figurative marks. As discussed by the ECJ in Nestlé SA v Cadbury UK Ltd, this is likely to be difficult for brands to prove when looking to trade mark product shapes, in addition to existing well-known word and figurative marks.

For more information, please contact Charlotte Bolton, Solicitor on charlotte.bolton@michelmores.com