Have a Break, have a Taxi

High Court rules that zero emissions taxi does not infringe London taxi trademark/ Judge relies on European Court Kit Kat ruling

Key message: a shape trademark must identify a particular business before it can be a valid registered trademark.

The High Court has ruled in favour of Frazer-Nash, maker of the new zero emissions black cab, after London Taxi Company (LTC), the maker of the TX series of London black cabs, claimed trademark infringement and passing off. The case is also of interest as it follows a very recent key decision in the European Court in Societe des Produits Nestle SA v Cadbury UK Limited (the KitKat case).

Justice Arnold rejected all the infringement claims and also invalidated LTC’s trademarks as to shape, saying that the shape was simply that of ‘a car’.

LTC claimed that Frazer-Nash had intentionally copied the shape of its black cabs as to its new zero-emissions capable London taxi, so as to deceive both taxi drivers and the public that the new ‘Metrocab’ was one of LTC’s taxis.

The Court fully rejected this allegation, ruling that there is a low degree of similarity between the appearance of the new Metrocab and LTC’s taxis:

The trademark claims were also declared to be invalid and/or not infringed because:

  • the shape of the taxis gave the trademarks substantial value
  • one of the shapes had not been put to genuine use for at least five years; and
  • there had been no unfair advantage taken by Frazer-Nash of LTC’s trademarks

LTC’s trade marks should never have been registered because:

  • they were not inherently distinctive, being only variations of the typical shape of a taxi; and
  • they had not acquired distinctive character through use

In the European Court’s 2015 ruling in the KitKat Case it was held that people did not perceive Nestle’s KitKat as originating from Nestle only because of its shape as opposed to any other trademark present, like the wrapper design or logo or the  logo embossed on to the chocolate fingers.

Here, Justice Arnold applied for the first time his interpretation of the KitKat decision by finding that people did not see LTC’s taxis as those of LTC because of their shape, as opposed to other trademarks present, such as the badge on the front of their taxis. Taxi drivers know who makes the car they buy and taxi passengers don’t care.

Take away point – trademarks should not be registered without careful consideration and research. Think about your business and what trademarks you have or haven’t got protected, and take advice on how you should best protect your brand.

If you need advice as to protection or infringement of trademarks, copyright, designs, or trade secrets, contact Pippa Aitken from our intellectual property team.

Pippa Aitken
0191 226 7842

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