The High Court has today ruled in favour of our client, Frazer-Nash, in respect of a trade mark and passing off case. London Taxi Company, the makers of the TX series of London black cabs, lost their claim against two Frazer-Nash group companies in respect of the appearance of our client’s new London taxi. The judge rejected all the infringement claims and invalidated LTC’s trade marks for the shape of its taxis in respect of cars.
LTC claimed that Frazer-Nash had intentionally copied the shape of its black cabs in designing its new zero-emissions capable London taxi, in an attempt to deceive both taxi drivers and the public that the new ‘Metrocab’ was one of LTC’s taxis. The Court fully rejected this allegation, finding that there is a low degree of similarity between the appearance of the new Metrocab and LTC’s taxis. The judge was invited to inspect the new Metrocab in a line up with various models of LTC taxi – our client’s new taxi is on the left:
Click here to view the image.
Frazer-Nash taxi (left); LTC taxi (right)
The trade mark claims were also declared to be invalid and/or not infringed on various other grounds, including that the shape of the taxis gave the trade marks substantial value, that one of the shapes had not been put to genuine use for at least five years, and that Frazer-Nash had not taken unfair advantage of LTC’s trade marks.
The judge found that LTC’s trade marks should never have been registered because they were not inherently distinctive, as they were merely variations of the typical shape of a taxi, and that they had not acquired distinctive character through use. This case was the first opportunity for Arnold J to apply his interpretation of the CJEU’s ruling in the KitKat case outside of that case by finding that people did not perceive LTC’s taxis as originating from LTC because of their shape, as opposed to any other trade mark present, such as the badge on the front of their taxis. Taxi drivers will know who made the car they are buying and taxi passengers don’t care.
In a comprehensive judgment of nearly 300 paragraphs, Arnold J identified two aspects of trade mark law which will need to be resolved by the CJEU in the future (but on which no final decision was necessary in this case), namely:
- Whether it is enough that the shape of a product is unusual to establish inherent distinctiveness, or whether that is just one necessary factor; and;
- Whether second hand sales of a product can amount to genuine use for the purposes of defeating a non-use challenge.
This case demonstrates the importance of educating the public that a shape mark identifies a particular business before it can be a valid registered trade mark.