In another significant blow to trade marks for the shapes of products, a decision from the High Court taken by Mr Justice Arnold held that trade mark registrations for the "iconic" shape of a London taxi were invalid (partly because they were, or could have been, protected as registered designs).
The Judge also decided that one of the registrations was revoked as it had not been put to "genuine use" for a 5 year period - the vast majority of sales of that model during the relevant period were second hand, and did not qualify as "use" of the trade mark. At the same time, the Court held that the design of the new Metrocab would not have infringed the Claimant's registered trade marks which protected the shape of its rival's goods in any event.
While the new trade mark directive liberalises what may be protected as a trade mark, this decision again confirms that shapes of products (even iconic ones) which add substantial value to goods are not covered by trade marks. The decision also shows how the Courts frown on the trade mark system being used to obtain extended protection for shapes which are, or should be, protected as registered designs.
The London Taxi Company's trade mark registrations for the shapes of their London taxi cabs were invalidated as they consisted of shapes which added "substantial value" to the goods, and the Community Trade Mark registration was also deemed to be revoked for non-use.
The Defendants' design of their new Metrocab vehicle was held not to infringe the London Taxi Company's registered rights, and also did not constitute an act of passing off. This was held to be the case even if the Claimant's trade mark registrations had remained valid.
The fact that a shape of a product is registered, or could be registered as a registered design, is a relevant (although not determinative) consideration in whether that shape is registrable as a trade mark.
The sale of second-hand products and the recirculation of existing products on the market, and indeed disposals of those products for scrap, during the relevant period does not constitute "genuine use" of a trade mark.
The sale of new products which were updated versions of the older designs that were the subject of the trade mark registrations did not qualify as genuine use. Any distinctive character held by a shape derives from the totality of the shape, and even evolutionary changes can lead to the original registered shape falling out of "use" for the purposes of maintaining that trade mark.
WHY IS THIS IMPORTANT?
The decision shows that even "iconic" designs are still not necessarily "distinctive", and are thereby not registrable as trade marks, which can be theoretically maintained in perpetuity. Design owners who therefore try to extend their rights beyond the 25 years available for a registered design should beware that the courts often look unfavourably on any misuse of the trade mark system to protect the shapes of products for longer than the law intends.
In cases where distinctive product shapes are validly registered as trade marks, brand owners should consider filing new trade mark applications when the shape covered by the trade mark registration is discontinued and replaced with an updated design. This decision confirms that the use of the updated shape may not be sufficient to maintain the registration of the discontinued shape, even if the changes are fairly minor.
For more information please contact Ray Black or Mitain Patel.