Hot on the heels of the decision of Mr Justice Arnold in relation to the shape of the KitKat comes the decision in a trade mark dispute over the shape of taxis.
The London Taxi Company (LTC) is the successor in title to the manufacturer of various models of London taxi. It’s the owner of the following trade marks:
- Community Trade Mark No. 951871 for “motor vehicles, accessories for motor vehicles; parts and fittings for the aforesaid" in Class 12.
- UK Trade Mark No. 2440659 for "cars; cars, all being taxis" in Class 12.
LTC brought proceedings for trade mark infringement and passing off against Frazer-Nash Research Limited and Ecotive Limited over the marketing a new model of London taxi, referred to as the new Metrocab, which is currently being trialled. The defendants filed defences to the claims of infringement and counterclaimed that the trade marks were invalid.
In a judgement running to nearly 300 paragraphs, Mr Justice Arnold dismissed the claims for trade mark infringement and passing off brought by LTC and accepted the counterclaims and defences of the defendants. Arnold J concluded that both the trade marks (above) were devoid of distinctive character in relation to goods in class 12 and should not have been registered in the first place. The trade marks had not acquired distinctive character as a result of use and, regardless, they were invalid because they consisted exclusively of the shape which gives substantial value to the goods. The defendants would, therefore, also be able to rely upon defences to claims of trade mark infringement.
In dealing with the claims for passing off, Arnold J concluded that LTC’s claim to goodwill was based on a number of common features of its taxi designs including:
- a large and upright windscreen
- a tapering bonnet
- a deep/high bonnet
- a prominent grille
- a central ‘TAXI’ light on the roof
- round headlights flanking the grille
- a generally rounded body shape
The evidence filed by LTC did not, in the eyes of the judge, demonstrate that these features were indicators of the source of its taxis. As a consequence, the claim was dismissed.
This decision seems to be the right one. It was clear from the evidence that the defendants did not intend to deceive the public. Also, as this comparison image shows, the design of the Metrocab is quite different from that of LTC’s current design.
Interestingly, the passing off claim was focused on consumers of taxi services rather than purchasers of taxis. LTC did not (or could not) file evidence that the shape of the Metrocab is likely to lead consumers of taxi services to believe that it comes from the same source as LTC's taxis, as opposed to being a licensed London taxi. Further, as it was clear that the defendants did not intend to deceive the public, the claim was always bound to fail.