This article was first published in the August edition of the World Intellectual Property Review.
In Whirlpool Corporation v Kenwood, the Court of Appeal dismissed Whirlpool’s appeal against the finding that Kenwood’s kMix mixer did not infringe Whirlpool’s Community trade mark in respect of its KitchenAid Artisan mixer. The Court held that the trial Judge had not erred in concluding that although the kMix was “KitchenAid-ish” in appearance and that the kMix would call to mind the KitchenAid mixer, there was no unfair advantage or detriment caused by the launch of the kMix.
Whirlpool has marketed a premium priced stand mixer, the KitchenAid Artisan, since the 1930s and in Europe for the past 15 years. Whirlpool’s promotion of the Artisan has resulted in “good levels of public awareness among consumers in the UK”. It has a Community trade mark in the shape of the mixer represented by the outline diagrams shown below. The mark incorporates the words ‘KitchenAid’ written along the front of the mixer and is therefore not exclusively a shape mark.
Until the launch of the kMix by Kenwood in July 2007, the KitchenAid Artisan held a monopoly in the market for stylish, premium priced mixers. The kMix, which is also a C-configuration stand mixer is shown below in images taken from the Judgment
At first instance the Judge held that the shape of the kMix constituted a sign acting as a trademark. He held that although the shape of the kMix and the shape of the trade mark were sufficiently similar so as to call the other to mind, and that the goods were identical, there would be no confusion as to trade origin in the mind of the relevant average consumer such that there was no infringement under Article 9(1)(b) of the Community Trade Marks Regulation (CTMR). The Judge identified the relevant average consumer as being a design conscious consumer ‘willing to spend a significant sum on buying a kitchen mixer and influenced by the design of the product’. The finding under Article 9(1)(b) was not appealed.
Whirlpool also alleged infringement of Article 9(1)(c) CTMR which provides for infringement of a mark which has a reputation by an identical or similar sign applied to dissimilar goods where use of that sign without due cause takes unfair advantage of, or is detrimental to the distinctive character or repute of the CTM. Article 9(1)(c) can also apply where the goods of the mark and the sign are identical (ECJ in Davidoff & Cie SA v Gofkid Ltd). In order to establish infringement under Article 9(1)(c) the degree of similarity between the Community trade mark and the shape of the kMix must be such that the relevant section of the public establishes a link between the sign and the mark and that link would result in either or both of the kMix (i) taking an unfair advantage of the distinctive character or repute of the CTM; or (ii) causing detriment to the distinctive character or repute of the CTM.
The Court of Appeal approved the Judge’s approach in carrying out a global assessment in determining that the relevant average consumer would call to mind the KitchenAid Artisan when considering the kMix. Such a global assessment required consideration of the strength of the distinctive character of the CTM and the degree of similarity between the CTM and the shape of the kMix. The Judge held that there was “relatively little scope for deviation” from the shape of the Artisan for the shape to maintain the distinctive quality of the CTM. The Court of Appeal confirmed this conclusion holding that only limited changes from the actual appearance of the KitchenAid Artisan would be sufficient to differentiate another mixer from it in the minds of relevant average consumers. However, it was held that the similarity between the kMix and the KitchenAid Artisan was sufficient to constitute a link under Article 9(1)(c) even though that similarity did not cause confusion as to origin in the average consumer.
The existence of a link was not sufficient on its own to establish unfair advantage or detriment. In order to establish injury by way of detriment to the distinctive character of the mark, the Court requires evidence of a change in the economic behaviour of the relevant average consumer irrespective of any commercial gain to the later sign. Whirlpool’s appeal stated that the Judge made two findings of fact in its favour that firstly the kMix ‘is apt to erode the market share of the KitchenAid product’ and secondly in relation to the effect of the similarity between the two shapes on the economic behaviour of relevant consumers. In relation to the first point the Court of Appeal held that even if the market share of the KitchenAid Artisan was eroded by the kMix, this was not sufficient to amount to a detriment as such an erosion would be inevitable in a market where a second product was introduced in competition with a product which had previously held a monopoly. The Court of Appeal dismissed the second point. It reviewed the witness and expert evidence which the Judge had considered and held that although some of the witnesses would have taken a closer look at the kMix because of its resemblance to the KitchenAid Artisan when purchasing a mixer, they would not be influenced by that resemblance in making their decision as to which one to purchase.
Injury by way of unfair advantage is established by the existence of some kind of boost to the later mark by virtue of its link with the earlier mark, irrespective of whether the earlier mark has not suffered any loss of sales. The Court stated that showing that the later sign had derived an advantage was not sufficient, it must be shown that the advantage was unfair. It was held that Whirlpool failed to make out that the kMix took an unfair advantage. The Court noted that the designers of the kMix had the KitchenAid Artisan in mind when designing the kMix, this case differed significantly from that of L’Oreal v Bellure where the infringers intended to take advantage of the reputation and prestige of L’Oreal’s marks and exploit the marketing efforts in those marks. Although the Court stated that the Kenwood mixer was ‘KitchenAid-ish’, this was due to the fact that both mixers are C-configuration stand mixers designed to a high standard of style and therefore would inevitably have a similar appearance.
At First Instance the Judge expressed some reservations as to the process which had led to the registration of the CTM. However, a mark is presumed valid under Article 95 of the CTMR unless there is a challenge to its validity and there was no such challenge in this case. The Court of Appeal confirmed that the scope of protection of the CTM for the KitchenAid Artisan was held to be fairly narrow with “relatively little scope for deviation”. It is therefore questionable whether the limited scope of protection of a CTM incorporating the shape of the product is a commercially beneficial right to maintain where a competitor can launch a product which has a very similar appearance but does not infringe the CTM. However, the scope of protection was more limited in this case due to the specialist market considered and that the average consumer was held to be relatively sophisticated and design conscious.