When are shapes sufficiently distinctive to function as trade marks?

Originally published by Clare Jackman (UK).

Two High Court decisions in the UK last week highlight that it is not always easy to register and enforce shape trade marks even when the shapes themselves are iconic and recognisable by the public. The consumer’s perception of the trade marks was pivotal in both cases, with mere association being insufficient and reliance being too high a bar to clear.

London Taxi

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

In the first High Court Decision, Mr. Justice Arnold, concluded that the shape of the traditional London taxi was not sufficiently distinctive, or as iconic as the London Taxi Corporation claimed, to be a trade mark. The judge said that the trade mark would merely be seen as a variation of the typical shape of a taxi and that consumers (in this case, taxi drivers) would not regard the shape as indicating the origin of the taxis. They were far more likely to rely on badges on the front and rear of the vehicles themselves. As a consequence, a UK registration was declared invalid and a corresponding community trade mark was revoked on grounds of non-use. Even if the marks had been valid, the judged found they had not been infringed by the defendants and rejected the passing off claim.

Kit Kat

Nestlé v Cadbury [2016] EWHC 50 (Ch)

Nestlé was unsuccessful in registering the shape of its 4 finger Kit Kat (without Kit Kat embossed on each finger) as a trade mark on the basis that consumers recognise the 4 fingered bar and associate it with Nestlé. Mr. Justice Arnold decided that it was not enough that consumers recognise or make that association. According to the judge, Nestle had not shown that consumers rely on the shape of the four fingered bar, rather than its wrapper or the Kit Kat trade mark, in order to make the connection with Nestlé and so their appeal, against the Intellectual Property Office’s original decision denying registration, was dismissed.

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