The shape of a London 'black hack' taxi is not distinctive enough to be eligible for trade mark protection, the Court of Appeal has ruled.
The Court of Appeal upheld a 2016 judgment by the High Court which revoked two trade marks held by The London Taxi Corporation (LTC) for the shape of two models of its taxis.
The London Taxi Corporation appealed that decision and claimed that not only were its trade marks valid but that Frazer-Nash Research and Ecotive had infringed its rights in those marks with the shape of a new style of taxi they have developed called the Metrocab.
The Court of Appeal said that the High Court was right to determine that the taxis LTC manufactured did not have inherent distinctive character, nor had they acquired distinctive character through their use.
LTC had highlighted several features of its vehicles which it said showed that they were inherently distinctive, such as the size and sloping of the windscreen, the shape of the bonnet, the positioning of the 'taxi' light, and the prominence of the front grille. However, the judges ruled that those features were not significantly different from "the norms and customs of the sector".
The judges also considered how taxi hirers might perceive the shape of the trade marks that LTC were asserting to determine if those marks had acquired distinctive character through their use. The court said, however, that the High Court was right to determine that there was not enough evidence to show that "taxi hirers had come to perceive the shape of the taxi as denoting vehicles associated with LTC and no other manufacturer".
EU trade mark law recognises that shapes or other signs capable of being represented graphically can qualify for trade mark protection if they are "capable of distinguishing" one company's goods or services from those of its rivals.
Marks which are devoid of distinctive character cannot be registered as trade marks. However, where marks are not inherently distinctive, they can nevertheless be registered as trade marks if it can be shown that the mark has "acquired a distinctive character in relation to the goods or services for which it is registered" through its use.
The legal test for determining whether there is a sufficient link between marks and brands to merit trade mark protection involves evaluating what the 'average consumer' of a type of product perceives when they see a mark, such as a shape. The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect.
Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said the fact that the Court of Appeal upheld the original decision was "not particularly surprising".
"What is useful to take from the judgment is the fact that the Court of Appeal accepted that the ‘average consumer” for the purposes of the legal test to determine whether the trade mark was valid included people who hired taxis," Connor said. "It seemed slightly odd that the judge at first instance did not accept that such people were ‘average consumers” of a taxi; while it is true that such consumers do not buy taxis they certainly buy services delivered by taxis. Accordingly, rights holders should consider all potential consumers who interact with the trade marked goods when trying to assess the appropriate ‘average consumer’."