It’s been a few days since Geoffrey Hobbs QC, sitting as a Deputy High Court Judge, handed down his decision in Whirlpool v Kenwood. Weighing in at 48 A4 pages (but oddly, only eighty-odd paragraphs), the case could easily be subtitled ‘foodmixers at dawn’. At issue is the shape of Whirlpool’s retro-looking KitchenAid Artisan mixer and its rival, Kenwood’s kMix. The shape of the Artisan mixer is registered as a Community trade mark. Kenwood launched its kMix to be a rival product, intending to attract design-conscious consumers.
The average consumer for the purpose of establishing infringement could be taken to be the design-conscious consumer. These were premium-priced products targeted at that niche group of consumers. The question of who the average consumer is should be approached with an eye to the ‘real world’ and empirical evidence, rather than in the normative/regulatory way adopted by some Member States.
There was no likelihood of confusion and so no infringement under Art.9(1)(b). While the kMix would be recognised as ‘KitchenAid-ish’, it would not be mistaken for a KitchenAid. There wasn’t even confusion of the ‘bait and switch kind’ (though Mr Hobbs QC expressed his belief that this would be actionable), whereby consumers would only realise that the kMix was not a KitchenAid after close examination. Moreover, a consumer who was about to spend upwards of £300 on a mixer would be unlikely to be under a misapprehension as to trade origin. This lack of confusion also meant that there was no misrepresentation for the purposes of passing off.
The kMix made a ‘non-verbal statement to the effect that the kMix is a mixer’. Therefore it was a sign, and Kenwood couldn’t argue that it wasn’t being used as a sign for the purposes of Arts 9(1)(b) and (c).
As for Art.9(1)(c), the ‘mnemonic’ effect of the two marks meant that there was a ‘link’ between them. However, although it might affect its market share, the kMix would not affect the distinctive character or repute of the KitchenAid mark. In the words of Mr Hobbs QC, the KitchenAid was
‘distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for
the purposes of Article 9(1)(c).’
The IPKat reckons that this leaves a big question mark over the future of dilution actions where shape marks are involved. Perhaps there wasn’t really a diminution of the distinctiveness of the KitchenAid (though the IPKat reckons that Kenwood much have got a ‘leg up’ by the fact that its device resembled the KitchenAid in its ‘retro-ness’), but the Deputy Judge’s comments as to why this was an inappropriate case for applying free riding, tarnishment or blurring are very vague. To the IPKat this looks like scepticism towards the protection of shape marks through dilution, particularly when coupled with the Deputy Judge’s prefacing comments that ‘the sub-paragraphs of Article 7(1)(e) [functionality] also have a role to play in the determination of the question whether there is similarity between the bodywork of the Artisan and kMix mixers such that the latter without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the former.’ Much as the IPKat is a fan of dilution, he suspects that the sceptical approach is a sensible one. Too much protection for the distinctiveness of shape marks, or even against people taking advantage of earlier shape marks could lead to an earlier user managing to control the market for a type of product, or at least a particular genre of product-type (such as the retro food mixers).