IP ENSight | 6 December 2017

Black cabs and trade marks

by Delene Bertasso
The trade mark laws of many countries specifically mention product shapes among the items that can enjoy trade mark protection – shape trade marks are often referred to as “3D trade marks”. Yet, registering and enforcing 3D trade marks can be very difficult, particularly in Europe. This is evident from the latest UK court decision regarding London taxis. 

We have previously reported on the UK case of The London Taxi Corporation Ltd (t/a London Taxi Company) v Frazer-Nash Research Ltd and Another. The issue in this case was whether London Taxi Company (“LTC”), which manufactures the iconic London cab, could enforce 3D trade mark registrations that it has for the shape of the London cab against Frazer-Nash, which manufactures a new zero-emission cab called the Metrocab. Frazer-Nash responded to the infringement claim by applying for the cancellation of the trade mark registrations.

The first issue to be decided was whether the registrations were valid. The first court held that the registrations were invalid, being neither inherently distinctive nor distinctive through use. In addition, the court felt that the registrations breached the provision that a product shape cannot be registered if it gives substantial value to the goods. As the registrations were declared invalid, there could obviously be no trade mark infringement. 

This case also involved a passing-off claim, something that is not dependent on a trade mark registration, but rather on reputation and likelihood of confusion. The judge rejected the passing-off claim on the basis that there would be no confusion as to origin, because the common features between the taxis – the rounded body shape, round headlights, a large windscreen, a tapering and deep bonnet, a prominent grille, and a prominent “taxi” light on the roof – are not features that are regarded as source indicators by taxi users. 

Predictably enough, the matter went to the Court of Appeal (“CA”), which has now upheld the first court’s judgment. The CA held that the trade mark registrations were invalid as the “London Cab shape mark” lacked distinctiveness. On the issue of inherent distinctiveness, the court felt that the shape did not depart significantly from the norms of the sector in the manner that is required by prior European judgments. Interestingly, the CA’s analysis was not limited to cabs or even London cabs, but cars in general. The court felt that none of the features of the LTC vehicle were so different from anything that came previously that the shape could be described as departing significantly from the norms of the industry. With regards to acquired distinctiveness, the court felt that the evidence was not sufficient to establish that users of taxis had come to perceive the shape of the LTC vehicle as denoting vehicles associated with that company rather than other manufacturers. 

On the issue of passing-off, the CA agreed with the lower court that there was no evidence that users of cabs would see the new Metrocab as suggesting the same source as LTC’s taxis. In any event, the design of the new Metrocab was strikingly different from that of the LTC cab.

So, we have another high-profile European failure in the area of 3D trade marks, hot on the heels of Nestlé’s troubles regarding the shape of the Kit Kat chocolate bar. In South Africa, however, Nestlé succeeded with the shape of the Kit Kat bar, and the 2014 judgment in this case represents the South African Supreme Court of Appeal’s (“SCA’s”) latest thinking on 3D trade marks.

In the Kit Kat case, the SCA held that a trade mark registration for the shape of the Kit Kat chocolate bar was valid, and that it did not contravene the “technical result exclusion” that appears in South African law. The SCA held that the trade mark did not consist “exclusively” of a shape that’s necessary to obtain a technical result because, even though there were functional features to it, there were also non-functional features. 

Perhaps more importantly, the SCA found that the shape of the chocolate bar had acquired distinctiveness through use. The court was happy to accept this on the basis of the evidence of use, going back many years, that was submitted. It seemingly did not draw the distinction that has been drawn in Europe between mere recognition of a product shape and public acceptance of that product shape as a trade mark. It also didn’t seem to take into account the fact that the shape may have been used in conjunction with trade marks like Kit Kat.

Trade mark owners wanting to obtain protection for and enforce their 3D trade marks should remember that although it may be very difficult to secure or enforce 3D trade mark registrations in Europe, it may not always be as difficult in South Africa.

This article was reviewed by Gaelyn Scott, director and head of ENSafrica’s IP department.

 

Delene Bertasso

trade mark attorney | senior associate | IP
dbertasso@ENSafrica.com
cell: +27 83 399 6172

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