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13 November 2017Trademarks

WIPR survey: Black cab ruling reveals difficulties for shape marks

A ruling from the English Court of Appeal which said that the design of London’s famous black cabs lacks distinctive character shows that registering shapes as trademarks in the UK is becoming increasingly difficult.

That’s according to 60% of WIPR readers who responded to last week’s 10 second survey.

Earlier this month, the English Court of Appeal rejected an appeal from The London Taxi Company (LTC) against a finding that designs of the city’s famous black cabs lack distinctive character.

Lord Justice Floyd and Lord Justice Kitchin affirmed a decision made by Mr Justice Arnold in January this year at the English High Court.

LTC had hit Frazer-Nash Research, the manufacturer of the new eco-friendly Metrocab taxi, with a passing off claim and an accusation that Frazer-Nash had infringed two trademarks which depicted models of black cabs.

Arnold had  rejected LTC’s passing off claim and found the two trademarks to be invalid for class 12 (taxis) because they were “devoid of inherent distinctive character”.

One reader backed the English Court of Appeal and Arnold, stating that the object of a trademark “is not to provide a monopoly on a simple shape of a car”.

They added: “It is unlikely that the shape is immediately connected to a specific brand for the average consumer, therefore it would be difficult, or even worrying, to allow such a monopoly without a brand to justify it.”

According to LTC, the design of the Metrocab infringed its 3D trademarks, EU number 951,871, (which depicts the Fairway model), and UK trademark number 2,440,659 (covering the TX1/TXII model).

The Court of Appeal said that Arnold was correct to hold that the marks didn’t have distinctive character and had not acquired it by use.

This viewpoint was further backed by another reader, who stated that the black cab “is not a distinctive design that indicates the manufacturer”.

“It is not an indicator of origin to the consumer and, as such, is not a trademark. Very simply, nobody sees a black cab and immediately knows who made it,” they further stated.

However, not all readers shared the sentiment of the courts and above readers.

One simply stated: “If you can’t register this (or a KitKat), what can you register?”

For this week’s question we ask: Last week  WIPR reported that some lawyers said Broadcom's proposed takeover of Qualcomm depended on Apple and Qualcomm resolving their patent and competition dispute. Do you agree?

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Trademarks
1 November 2017   The English Court of Appeal has rejected an appeal from The London Taxi Company against a finding that designs of the city’s famous black cabs lack distinctive character.