The silhouette of a product registered as a trademark: what are the stakes?
The three-dimensional brand, which aims to protect the silhouette of a product, is a key issue for companies. However, such trademark registration is regularly refused for lack of distinctiveness by the courts. This is evidenced by the decision taken on November 1st, 2017 by the Appeal Court of England and Scotland, which upheld a first instance decision seeking the annulment of European three-dimensional trademarks 951871 and 2440659 in class 12 for vehicles including taxis. These trademarks were registered by the London Taxi Corporation, the famous London taxis. The company had sued its competitor Frazer-Nash Research Ltd & Anor for infringement of its trademarks for the manufacture and marketing of similarly shaped vehicles, which replied by cancelling these trademarks.
This judgment recalls the fundamental principles set out in Community legislation and case law on three-dimensional trademarks. Even if today many brands bear the silhouette of the products they are targeting (e. g. the famous Coca-Cola bottle), it is required that this shape be sufficiently distinctive, that it should carry an arbitrary character in relation to the services or products it designates.
A shape certainly famous, but not very distinctive…
In the present case of November 1st, 2017 (Case No.: A3/2016/0867), the Appeal Court, after defining the target audience for the products marketed under the contested trademarks, namely both taxi drivers and their customers, set out to assess the distinctive character of the latter. This distinctive character is one of the essential elements of trademark registration.
To this end, the Appeal Court followed the first instance decision which had held that the registered trademarks lacked distinctive character because they did not deviate sufficiently from the norms and habits of the sector, as required by case law (CJUE, Judgment of October 20th, 2011, Freixenet / OHIM, C-344/10). Indeed, it was decided that the silhouettes of taxis registered as a trademark can only be perceived by the consumer as a variant of the silhouette typical of a taxi or more generally of a vehicle and not as a form that would really distinguish the origin of the production. Since this inherent distinctiveness was not present, the Court subsequently assessed whether this distinctiveness could have been acquired through use. Once again, it upheld the trial decision, finding that there was no evidence to suggest that the intended audience, including the customers of taxi drivers, would clearly associate the form of the taxi with the production of the vehicle supplied by London Taxi Corporation. It stressed that, in all circumstances, the silhouette of a product is rarely used as an indicator of origin by the relevant public. It therefore concluded that in the present case, the customer base attached more importance to the service provider and the related London regulations than to the producer of the vehicles in question when using the offered services.
The British courts, tough on the three-dimensional trademark?
This decision is part of a strict assessment of distinctiveness by the UK, and more generally European and Community courts. Indeed, the High Court had already refused to register the shape of the famous KitKat chocolate bar, marketed by Nestlé, as a three-dimensional trademark for lack of distinctiveness, despite the product’s reputation acquired over the last few decades. It thus followed OHIM’s earlier decision. (Decision of the High Court of England and Wales, 20 January 2016, CH/2014/0392, CH/2013/0394)
At the time, it was felt that such registration would have given a significant competitive advantage to the biscuit giant. Such an assessment may also be made in respect of the London taxi manufacturer.
This judgment highlights the difficulty in conferring on the silhouette of a product the right granted by the three-dimensional trademark. It would, however, have been interesting to question the outcome of the present judgment if the form of the taxi had been filed as a design and not as a trademark…