The protection of vehicles using trade marks and registered designs - London Taxis vs Scooters

The Fairway
City travel is a highly litigated area at the moment but this is not a post about Uber but rather the protection of two very different modes of London transport, the black cab and the scooter.

This post concerns the black cab but watch this space for more on its scooter cousin.

The Court of Appeal's decision in The London Taxi Corporation v Frazer-Nash was recently handed down.  This case was an appeal from a decision by Arnold J that various registered trade marks of The London Taxi Corporation (LTC) were invalid for (i) lack of inherent distinctive character, (ii) lack of acquired distinctiveness, (iii) the shape providing substantial value and (iv) in one instance, the mark was revoked for non-use.

The trade marks in issue (both UK and Community trade marks - now EU trade marks) depicted the shape of two types of London taxis including the Fairway.  The appeal considered various issues and ultimately upheld the High Court decision.  The following questions/issues are particularly interesting particularly in the context of shape marks.

Who is the end user?

Floyd LJ made a few interesting observations about who is the end user of a taxi.  Is it the person driving the taxi or can it also include the person who rides in the back?  Both Case C-371/02 BOSTONGURKA (ECLI:EU:C:2004:275) Case C-409/12 KORNSPITZ (ECLI:EU:C:2014:130) considered as they distinguished between a "consumer" and an "end user".  Floyd LJ did not consider either case to be of tremendous assistance as the end user for chopped pickled gherkins and oblong bread rolls respectively likely meant other members of the household rather than someone who had temporary hire of a taxi without ever taking full possession of the goods.

Likewise, in Schutz v Delta where the end users constituted a class of persons to whom the trade mark might have had significance, once again the end users took full possession.  Having considered the pros and cons including an admission that in some circumstances, the type of vehicle could be a relevant consideration for the hirer e.g. for a chauffeur service, he concluded (obiter) that "the term average consumer includes any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it" and "taxi hirers are not excluded in principle from consideration as a relevant class of consumer."

Can a Range Rover provide distinctive character?

Range Rover's are often turned to as a vehicle for traversing rough terrain and the Appellants wheeled them out to try and effect a rescue based on the General Court's decision in Case T-629/14 (ECLI:EU:T:2015:878) which concerned the shape of a Range Rover.  The shape mark was allowed to proceed to registration for "vehicles for locomotion by air and water" (but not for locomotion by land).  The registration was allowed because the Range Rover shape departed significantly from "the norm and customs of the sector for vehicles for locomotion by air and water" and consequently it was not devoid of distinctive character for these goods although it was for vehicles in general. As Floyd  LJ summarised, "put crudely, the makers of the Range Rover could have registered the shape for a place or a boat but not for a car".

Floyd LJ considered that there was merit to the argument that marks which depart significantly from the norms and customs of the sector necessarily possess distinctive character.  However, the features that LTC identified as distinctive did not "depart significantly" (emphasis added in the judgment) from basic car design features and were "no more than a variant on the standard design features of a car".  Therefore he agreed with Arnold J that the marks did not have inherent distinctive character.

Acquired distinctiveness

This was the main area of dispute.  The black cab is undoubtedly an iconic and highly recognisable vehicle but this was not enough to prove that the shape marks have "come to identify the [taxis] as originating from a particular undertaking and so to distinguish those goods from those of other undertakings".

Although the shape had a secondary meaning as representing a licensed taxi, this was not enough for LTC to win its appeal and the limited evidence that LTC had taken steps to educate the public that the shape of the taxis denoted trade origin proved fatal.

Substantial value

One remarked upon feature of the High Court decision was the finding that the shape of the mark held substantial value essentially because of the shape's fame and iconic status.  Floyd LJ did not consider the matter to be entirely clear cut and if the question of substantial value had proven essential to the appeal he would have referred to the CJEU.  As it stood, any such referral is unnecessary but the issue may well arise in the future.
The protection of vehicles using trade marks and registered designs - London Taxis vs Scooters The protection of vehicles using trade marks and registered designs - London Taxis vs Scooters Reviewed by Rosie Burbidge on Thursday, November 09, 2017 Rating: 5

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