Singapore - English High Court Discusses Three-Dimensional Marks And The 17 Difficulties Inherent In Attempting To Register And/Or Enforce Such A Trade Mark Registration.

Legal News & Analysis - Asia Pacific - China - Dispute Resolution

19 June, 2016

 

Trade mark – three-dimensional mark – invalidity – inherent distinctiveness

 

-- The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer Nash Research Ltd and another [2016] EWHC 52 (Ch), (England, High Court, 20 January 2016)

 

Facts

 

The London Taxi Corporation Limited (“Claimant”) is the successor in title to the manufacturer of certain models of the London taxi, namely, Fairway, TX1, TXII and TX4 models of the London taxi (the “Taxis”). It is also the proprietor of the following registered trade marks, which are the trade mark registrations for the shapes of the Taxis:

 

(i) Community Trade Mark No. 951871, a three-dimensional mark registered in respect of, among other specifications, motor vehicles as well as accessories, parts and fittings for the aforesaid, as of 5 October 1998 (the “Community Mark”). Please click here to see how the mark is represented.

 

(ii) United Kingdom Trade Mark No. 2440659, a three-dimensional mark registered in respect of ‘cars; cars, all being taxis’ as of 1 December 2006 (the “UK Mark”). Please click here to see how the mark is represented.

 

Frazer-Nash Research Limited and Ecotive Limited (“Defendants”) are the manufacturers of a new model of London taxi (“Metrocab”). A representation of the Metrocab can be found here.

 

The Claimants contend that, inter alia:

 

1. The shape of the Metrocab has been substantially copied from the shape of one of the Taxis and that the Defendants’ marketing of the Metrocab threatened to infringe the Trade Marks; and

 

2. The Defendants’ choice of the shape of the Metrocab was chosen deliberately to deceive the public as to the origin of the Metrocab, and that the Defendants were committing passing off with respect to the Claimant’s alleged goodwill in the Taxis. 

 

In response, the Defendants contend, inter alia, that the Trade Marks were invalid because they lacked distinctiveness and added substantial value to the goods pursuant to Articles 3(1)(b) and 3(1)(e)(ii) of Directive 2008/95/EC (the “Directive”) and Articles 7(1)(b) and 7(1)(e)(iii) of Regulation 207/2009/EC (the “Regulation”) respectively.

 

Decision

 

The Court held that the Trade Marks were invalid because they were devoid of distinctive character, and because they consisted exclusively of the shape which gave substantial value to the goods, and further the Community Mark should be revoked for non-use.

 

The Court’s reasoning is set out below.

 

The relevant consumer

 

As a preliminary matter, it was decided contrary to the Claimant’s submissions that taxi drivers, and not the consumers of taxi services, were the relevant consumers of the goods. Here, the Court drew a distinction between the end users of the goods specified and users of a service provided by consumers of the goods, and held that taxi drivers were the relevant consumers in determining the distinctiveness of the Trade Marks.

 

Inherent distinctiveness under Article 3(1)(b) of the Directive / Article 7(1)(b) of the Regulation

 

The Court reviewed the case-law and held that the unusual shape of a product or mark was necessary but not sufficient on its own in establishing inherent distinctive character under the Directive, and in any case, even though the Trade Marks looked different compared to other cars, to the relevant consumer (i.e. the taxi driver), the Trade Marks would have been perceived as just a variation of the typical shape of a taxi. In view of this, the Court held that the Trade Marks did not depart significantly from the norms and customs of the sector with respect to the goods for which registration had been sought and hence, the Trade Marks lacked distinctive character under Article 3(1)(b) of the Directive and Article 7(1)(b) of the

 

Regulation.

 

In addition, the Court drew a distinction between a distinctive shape to sell and a distinctive shape meant to denote origin of the goods, the latter of which was a requirement for inherent distinctiveness under the relevant provisions of the Directive and Regulation. As such, the relevant consumer would have to additionally perceive the shape of the Trade Marks as identifying the origin of the goods, which was not fulfilled in this case. 

 

Acquired distinctiveness under Article 3(3) of the Directive / Article 7(3) of the Regulation

 

The Court referred to an earlier reference to the European Court of Justice on this issue, and held that in order for the Trade Marks to have acquired distinctive character, a ‘significant proportion of the relevant class of persons’ must have perceived the Claimant’s goods as originating from the Claimant because of the Trade Marks in question, as opposed to any trade mark which may also have been present at the relevant date.

 

On this basis, the Court held that none of the Trade Marks had acquired distinctive character among a substantial proportion of taxi drivers in the UK. This was because the Claimant had not sufficiently educated the relevant public that the shapes of the Trade Marks denoted the source of the Taxis.

 

Substantial value under Article 3(1)(e)(iii) of the Directive / Article 7(1)(e)(iii) of the Regulation

Under these provisions, a sign which consists exclusively of the shape which gives substantial value to the goods shall not be registered as a trade mark.

 

The Court noted that for the purposes of these provisions, it must be the shape of the sign itself which adds substantial value to the goods. For the purposes of determining whether the shape adds value to the goods, it will be relevant to make a comparison with the shapes of equivalent articles. Goodwill derived from sales and advertising was not a relevant consideration. It is only if the shape of the trade mark in issue has a high value relative to other shapes that the trade mark will be excluded from registration.

 

The Court considered the iconic status of the shape of the relevant Taxis, and held that significant value was placed by the relevant consumers in the shape of the Trade Marks. The Court also observed that the average consumer in the UK would recognize the shape of the relevant Taxis as that of a London taxi, and it was therefore a shape on which consumers had placed a value on. Supporting this conclusion was the fact that both Trade Marks were or could have been registered as designs, in which case a trademark would effectively grant an indefinite monopoly over such rights. Hence, the Trade Marks were invalid even if they had acquired a distinctive character.

 

Comment

 

This case contains an extensive discussion of three-dimensional marks and the difficulties inherent in attempting to register and/or enforce a trade mark registration for three-dimensional marks. Such a point has yet to be decided in the local courts, although Sections 7(1)(b), 7(2) and 7(3)(c) of the Singapore Trade Marks Act are substantially similar to the provisions governing inherent distinctiveness, acquired distinctiveness and substantial value under the Directive respectively.

While English judgments are non-binding on local courts, the issues discussed in this case are an interesting indicator of some of the issues which may be considered by local courts in a similar fact scenario.

 

A copy of the decision may be accessed at:

 

http://www.bailii.org/ew/cases/EWHC/Ch/2016/52.html 

 

wongpartnershiplogo

 

For further information, please contact:

 

Jeffrey Lim, Partner, WongPartnership
jeffrey.lim@wongpartnership.com