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IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
COMMUNITY TRADE MARK COURT
MR GEOFFREY HOBBS Q.C.
 EWHC 1930 (Ch)
||Royal Courts of Justice
Strand, London, WC2A 2LL
||23 July 2009
B e f o r e :
LORD JUSTICE RIX
LORD JUSTICE LLOYD
LORD JUSTICE WILSON
|| (1) WHIRLPOOL CORPORATION
(2) WHIRLPOOL PROPERTIES INC
(3) KITCHENAID EUROPA INC
- and –
(Transcript of the Handed Down Judgment of
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James Mellor Q.C. and Thomas Moody-Stuart
(instructed by Lewis Silkin LLP) for the Appellants
Iain Purvis Q.C. Andrew Lykiardopoulos and Iona Berkeley
(instructed by Field Fisher Waterhouse LLP) for the Respondent
Hearing dates: 1 to 3 April 2009
HTML VERSION OF JUDGMENT
Crown Copyright ©
Lord Justice Lloyd:
- The Claimants produce and sell kitchen equipment, including a stand mixer called the KitchenAid Artisan. This item has been made and sold in the United States since the 1930's, with very little change in the design. It has been introduced to the European market, including the UK, over the past 15 years or so. The KitchenAid Artisan is sold for £300 or more. In 2007 the Defendant, Kenwood, started selling a rival product of its own, called the kMix, which is also a stand mixer, and also sells for £300 or more. By these proceedings the Claimants seek to prevent sales of the kMix, unless it is adapted so as to be differentiated clearly from the KitchenAid Artisan. They relied at trial on trade mark infringement, on two different bases, and on passing-off. The claim came to trial before Mr Geoffrey Hobbs Q.C., sitting as a Deputy Judge of the High Court, in May 2008. By his judgment handed down on 4 August 2008,  EWHC 1930 (Ch), he dismissed all three claims. The appeal is against the dismissal of one of the trade mark infringement claims.
- The Claimants, to whom I will refer as Whirlpool (there being no need to distinguish among them), have the benefit of a Community Trade Mark (CTM), number 2, 174, 761, in Class 7: electric beating and mixing machines and attachments for such machines. The registered description of the mark is as follows:
"The mark consists of a fanciful electric beating and mixing machine configuration upon which the word KitchenAid appears."
- The graphic representation of the mark shows an outline of the mixer viewed from three different angles, thus:
- Because the trade mark is registered under the Community system, its incidents are defined by Council Regulation 40/94 of December 20 1993, on the Community trade mark (the CTMR). The rights conferred by a CTM are set out in article 9. The appeal arises under article 9(1)(c), but it is convenient that I set out the whole of article 9.1:
"1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
- The sign complained of is the shape of the kMix. Thus, although the goods for which the CTM is registered are the same as to those for which the sign complained of is used, the sign is not identical, so paragraph (a) does not apply. The judge held that there was no likelihood of confusion on the part of the public, and therefore rejected the claim based on paragraph (b). On the face of paragraph (c) it does not apply, because of the identity of the goods for which the CTM is registered with those for which the sign is used, but in Davidoff & Cie SA v Gofkid Ltd Case C-292/00  1 WLR 1714, the European Court of Justice held that the equivalent provision in the First Council Directive 89/104 on trade marks (article 5(2)) extends not only to the case of dissimilar goods or services but also to cases where the sign in question is used for goods or services identical or similar to those covered by the registered mark. The same applies under the CTMR.
- Thus, Whirlpool had to prove that the CTM had a reputation in the Community, that the sign used by the Defendant in relation to the kMix was similar to the CTM, and that the Defendant's use of that sign (without due cause) took unfair advantage of, or was detrimental to, the distinctive character or the repute of the CTM.
- The judge said that, as between the shapes of the two mixers, there was "clearly enough similarity for each to remind people of the other", but not to lead the average consumer to think that one is the other, whether seen together or separately. The judge accepted that the appearance of the kMix was a "sign", but rejected the case based on a likelihood of confusion as to trade origin.
- In relation to the issue of similarity, sufficient for the purposes of article 9(1)(c), the application of the article to the case of similar goods and services has been held by the ECJ to be legitimate if the degree of similarity between the mark with a reputation and the sign has the effect that the relevant section of the public establishes a link between the sign and the mark: see Adidas AG v Marca Mode II Case C-102/07 paragraph 41. The judge held that it was sufficient to establish such a link that the one product called the other to the mind of the average consumer. However, he rejected the claim by Whirlpool that the link would result in the kMix taking unfair advantage of the CTM, and that it would be detrimental to the distinctive character or repute of the CTM.
- Whirlpool contend that the judge made two errors of law in coming to this last conclusion, and that it can be seen that, but for those errors, he would and must have decided in their favour. Kenwood deny any error of law on the part of the judge in this respect, but submit by a Respondent's Notice that others of his conclusions unfavourable to them were not justified. In resolving the issues so arising, we were assisted by written and oral submissions of conspicuous ability on both sides, for which I am grateful.
The facts in outline
- The KitchenAid Artisan as now sold is substantially similar in its design to a product originally introduced in the US in 1937 and then protected by a US design patent. Whirlpool acquired the KitchenAid business in 1985. The mixer has been called the Artisan since about 2004. It is part of a range of kitchen appliance products. (There may therefore be other items which are known as KitchenAid Artisan, but when I use that phrase in this judgment I refer only to the stand mixer.) There may have been sales of the KitchenAid Artisan in the UK before 1994, but hard evidence of sales is only available from that date, with sales since then also in France and Germany, and to a lesser extent in Italy, the Netherlands, Austria and Belgium. Promotion of the KitchenAid Artisan has been through in-store, point of sale, online and public relations promotions rather than by paid-for press or television advertising. The judge said in paragraph 29 that he was satisfied:
"that Whirlpool's promotional efforts resulted in good levels of public awareness among such consumers in the United Kingdom (and, I would accept, in France and Germany)."
- To take a particular example of such promotions, in a series on Christmas cooking broadcast by BBC Television in December 2006 and again in 2007, the KitchenAid Artisan featured as the mixer of choice of the celebrity chef Nigella Lawson.
- Examples of the KitchenAid Artisan have been or are to be seen in museums as an example of good design. It has been described as a classic design icon of the 20th century. A liking for the design is seen as a major factor in the appeal of the product to potential consumers. The judge quoted from a report commissioned by Kenwood as to customer perceptions:
"Kitchen Aid consumers love the design of their machine. They view it as a statement of them and their stylish, discerning lifestyle. A piece of equipment to show off."
- Kenwood is known as a major manufacturer of kitchen appliances sold in the UK and elsewhere. Until the introduction of the kMix, however, Kenwood did not sell a mixer characterised by a high standard of design and a correspondingly high retail price, as the KitchenAid Artisan is. Kenwood had a large share of the UK market for kitchen appliances, including for mixers, but Whirlpool's sales were proportionately higher in terms of value than as regards units. The judge referred to the respective figures in the UK market for the three years 2004 to 2006 being accepted to be roughly that Kenwood's sales were 70%, 70% and 75% of the market by volume, to Whirlpool's 29%, 25% and 25%, whereas Kenwood's share by value was 68%, 64% and 61% to Whirlpool's 31%, 34% and 38%. Mixers of other brands are available on sale, but none has a significant share of the market, according to the evidence at trial.
- The judge referred to the process by which the design of the kMix was developed. Whirlpool had alleged that the kMix was intended to compete directly with the KitchenAid Artisan in terms of price and target market, but not that it was actually designed to deceive or mislead people. Nor did Whirlpool make any other relevant allegation as regards Kenwood's intentions in respect of the design of the kMix. He heard evidence as to the design process, which he reviewed at paragraph 7. He commented that "the suggestion is that there was a miscalculation as to what would be an acceptable design to adopt", and he accepted that this could and should be considered. Having done so, he said that he found that:
"the kMix is indeed what it appears to be. It is the means by which Kenwood intended to move into the premium price sector of the market occupied by the Artisan mixer and make sales to design conscious consumers as best they could by matching the KitchenAid offer. Kenwood undoubtedly had the KitchenAid Artisan mixer in its sights at all material stages of the process leading up to the finalisation of the design of the kMix."
Having referred to the evidence as to the design process relating to the kMix, he said this:
"there was colour matching, with the red and almond colours used for the kMix being brought up tight against the red and almond of the Artisan. Whilst the KENWOOD branding beneath the dial could easily have been larger, I do not regard it as inappropriately small. In my view there was a calculated decision to proceed with the finalised design of the kMix in the sense only that it was thought to be an acceptable design with which to compete head on with the KitchenAid mixer. It was not, on the evidence before me, chosen for that purpose by reason of any anticipated propensity to deceive or mislead."
- The kMix was launched in July 2007. Whirlpool issued these proceedings in August 2007. On 13 November 2007, on an application for expedition and case management directions, Lightman J ordered disclosure of details of any process undertaken by the Claimants by way of a survey or a witness-gathering exercise, if witnesses were to be called for the Claimants as a result. Whirlpool's solicitors had already started to undertake such an exercise, approaching potential witnesses in a variety of ways. We were told that there had been difficulty in obtaining a kMix at the start of the proceedings, but by November 2007 a number had been obtained which were used in the process of identifying possible witnesses on behalf of Whirlpool. Although Kenwood is a well-known brand and mark, the kMix itself was not well known at that time.
- The CTM is not limited by colour. According to the evidence each of the KitchenAid Artisan and the kMix is available in several different colours or finishes. The judge said of the KitchenAid Artisan (at paragraph 5):
"The mixers are available in a variety of rich colours, the most popular in recent years having been red, almond and white. They are also available in an all-metallic finish. On the evidence before me it is clear that the selection of colour (or an all-metallic finish) is made with care by purchasers buying for domestic use. People buy these mixers for their style and presentation as well as for their functional qualities."
- The kMix is available in a red similar to that used for the KitchenAid Artisan, as well as in other colours including almond and white. However, colour only features on the upper part of the kMix, whereas the whole body of the KitchenAid Artisan is in colour. These images of the KitchenAid Artisan are taken from the judgment:
- The KitchenAid Artisan has the word KitchenAid in black on a silver band below the protruding nose of the mixer, as is included in the CTM as registered, and it also has the word Artisan in black on each side of the word KitchenAid on that band.
- This is the kMix, also as illustrated in the judgment:
- On one side of the upright part of the stand, there is a dial. Below this is the word Kenwood. On each side of the upper part of the mixer there appears the word kMix, not in a contrasting colour but inset from the surface of the mixer.
- Whirlpool's concerns at the impact on its market made by the kMix were increased by one particular development. The KitchenAid Artisan had been sold in shops dedicated to the sale of Aga range cookers, under specific arrangements between Aga and Whirlpool. These arrangements were overtaken by a new collaboration between Aga and Kenwood, whereby the kMix was sold in Aga shops, in a special version: in place of Kenwood on the side of the upright part, it has AGA, and on the back it has "Special edition by Kenwood". Whirlpool amended its Particulars of Claim in 2008 to complain of this specifically. The judge held that no separate point arose from this version of the kMix: see paragraph 82. This is not challenged on appeal.
- The issues of fact before the judge which are relevant on this appeal were, first, whether the shape of the KitchenAid Artisan was sufficiently distinctive to function as an indication of trade origin in relation to the average consumer, secondly, if so, whether the shape of the kMix was sufficiently similar to that of the KitchenAid Artisan for the necessary link to be established between the CTM and the sign consisting of the shape of the kMix, in the mind of the average consumer, and thirdly whether, if so, the sale of the kMix with that shape, and without further differentiation from the KitchenAid Artisan, amounted to either or both of taking unfair advantage of the distinctive character or repute of the CTM, or causing detriment to that distinctive character or repute.
- The average consumer of the relevant goods is to be taken as being reasonably well-informed and reasonably observant and circumspect. Given the nature of the product, the relevant average consumer is someone willing to spend a significant sum (£300 or more) on buying a kitchen mixer and influenced by the design of the product as well, no doubt, as by its functional qualities. As the judge said at paragraph 69, both mixers are "premium priced products targeted at design conscious consumers".
- In order to prove its case on the factual issues, Whirlpool called witnesses of several different kinds. There were 23 witnesses identified through the witness-gathering exercise to which I have referred. Seven of these were cross-examined; the witness statements of the others were read without challenge. The disclosed documents included material emanating from others approached during the exercise who did not make witness statements; the judge referred to some of this. They also called two other witnesses to give evidence of mis-identification, but the judge found these of no assistance, and I need not refer further to them (see paragraphs 56 to 58 of the judgment). Whirlpool called three of their employed demonstrators, who worked at department stores (two at John Lewis stores and one at Fenwicks). They also called an expert witness, Mr Piers Schmidt, but the judge found his evidence to be of no value (paragraphs 65-66). Kenwood called evidence about reports from their own demonstrators, and also called an expert witness, Mrs Trudy Watson, whom the judge found helpful.
- Whirlpool did not put forward their 23 witnesses from the public as representing the product of any kind of survey such that any extrapolation could be made from the results. As the judge said at paragraph 34:
"No attempt was made to attach statistical significance either to the results of the exercise as a whole or to the evidence of the 23 interviewees who provided witness statements."
They were simply witnesses each of whom was said to be of the relevant type of consumer, whose evidence was put forward for what is was worth on an individual basis. I will refer to them as survey witnesses, in order to distinguish them from other witnesses, but without any implication that they are, or were put forward as being, in any way representative of opinions other than their own.
- The judge devoted some time to describing the survey process and the resulting evidence. In all, 660 questionnaires were obtained through the surveys, 26 from an exercise initiated by telephone and the others from questioning members of the public at a BBC Good Food Show in London, and at various other venues in, outside or near places associated with cooking, and also through a request for volunteers at Leith's School of Food and Wine.
- Of the 634 members of the public approached otherwise than by telephone who provided answers to questions recorded on a questionnaire form, only 112 gave contact details. Whirlpool followed these up and 14 of them attended the offices of Whirlpool's solicitors for further questioning. Ten of these gave witness statements which were served in the proceedings. Three of these ten witnesses were cross-examined, and the other seven witness statements were admitted without challenge.
- Twenty-six people out of those who were approached by telephone by a market research agency attended the solicitors' offices. All of these answered questions recorded on questionnaires. Seventeen proceeded to a further stage of the operation at the offices, and thirteen of them gave witness statements, of whom four were cross-examined; the other witness statements were admitted without challenge.
- A preliminary stage in the case of each person approached was to show her one of four flashcards with an image of the kMix. The judge included the flashcard images in his judgment (and pointed out salient features of each) at paragraph 38. Whether or not because flashcard 1 shows clearly the trade mark Kenwood and the product name kMix, no-one to whom that card was shown proceeded to the later stage of the exercise, at the solicitors' offices. The judge set out the questionnaire used in connection with flashcards 2 and 3 at paragraph 39, with some apt critical comments about the questions and therefore about the value of the answers.
- Those who were approached by telephone fell into two categories. Some had recently purchased a KitchenAid Artisan; others were drawn from a list of names known to the agency as potentially interested in purchasing kitchen stand mixers. They were asked questions aimed at limiting the witnesses to those who either were interested in purchasing a mixer for £300 or more, or owned a KitchenAid Artisan mixer already. We were shown the instructions given to those who carried out the telephoning exercise, but it is unnecessary to go into further detail as to this. The 26 people approached who were asked, and agreed, to take the process further attended the solicitors' offices where they were shown the fourth flashcard, and were asked questions according to another questionnaire, set out at paragraph 45 of the judgment. For nine out of the 26 this was the end of the process. Seventeen went through the next part of the exercise, which was the same as for the 14 drawn from the other part of the survey process. This is what was known as the "box exercise", and is described in paragraph 41 of the judgment. In summary, those participating in the exercise were shown, in turn, a debranded red KitchenAid Artisan, that is to say a real KitchenAid Artisan but with the words KitchenAid and Artisan concealed, then two kMix mixers, one in red and the other in white, and last two KitchenAid Artisan mixers, also one in red and the other in white. At each stage they were asked questions about what they were shown. Whirlpool took the position (which Kenwood did not challenge) that, after the initial questionnaires in each case, the process was covered by litigation privilege, so that no disclosure was given of the process or results of the questioning once potential witnesses had started on the "box exercise". Witness statements were then prepared on the basis of the record made at the time of the comments made in relation to the mixers shown.
- The judge said a number of things which indicate that he regarded the evidence obtained in this way as of limited value. At paragraph 36 he made the basic point that, unless the research work which is the basis for the survey provides a sufficient basis for extrapolation, "the responses of individual interviewees can really only be taken into account for what they may individually be thought to be worth. That may be little or nothing." Later, at paragraph 68, he said that, in assessing the issues of distinctiveness and similarity in the light of the evidence, he had taken account "of the need for circumspect evaluation of the evidence of the witnesses who passed through the special filter of the 'witness gathering exercise'." He also commented individually on some of the witnesses, and set out in summary the questionnaire responses of all 26 people who had attended Whirlpool's solicitors' offices following a telephone approach.
- In the course of submissions by each side on the appeal, reference was made to the evidence of a number of the survey witnesses, both those who gave oral evidence and some others. For that reason it is necessary that I should say something about some of them, which I will do later in this judgment.
- On behalf of Kenwood, a criticism was made of the selection process that it favoured unduly those who already owned a KitchenAid Artisan. Although such a person could reasonably be taken to be design conscious and to have been sufficiently interested to acquire an expensive appliance, it was suggested that she would be pre-disposed by familiarity to find that the shape of the KitchenAid Artisan was distinctive, and to find a novel product similar in shape to that of the KitchenAid Artisan. Moreover such a person is not likely to be interested in acquiring another such mixer, having one already. It was submitted that more relevant consumers would be those who did not own or use a KitchenAid Artisan but who might be interested in acquiring an expensive, well-designed stand mixer. The effect of the shape of the respective products on the economic behaviour of such a consumer is one of the principal issues in dispute.
- Of the 23 survey witnesses, only seven did not own or use a KitchenAid Artisan. In addition, of the 13 respondents to the telephone survey process for whom we have only questionnaires, not witness statements, nine did not own or use a KitchenAid Artisan.
- Reference was made to the evidence of these witnesses on two points: first to assess the meaning and significance of a comment by the judge in paragraph 80 of his judgment, and secondly in relation to the challenge in the Respondent's Notice to the judge's finding of a sufficient link. I will deal with these points in due course as necessary.
- Mr Mellor Q.C. for Whirlpool also relied on the evidence of the Whirlpool demonstrators. Both parties use demonstrators employed by them, but working in department stores, to help sell their products within those stores. At and after the time of the launch of the kMix, each sought to monitor public reaction, including by asking their respective demonstrators to report relevant comments from the public. Kenwood's demonstrators reported some comments which showed perceptions of similarity, but no instance of confusion: see paragraph 59 of the judgment. Three of Whirlpool's demonstrators gave evidence. Mrs Champion, in a witness statement made in February 2008, from memory rather than contemporary notes, recorded some comments showing a perception of similarity. The judge did not find her evidence a reliable source of information as to what individual customers had said at the time (paragraph 61). Mrs Pollock worked until January 2008 as a Whirlpool demonstrator at the John Lewis store at Bluewater, Kent. She gave evidence in her witness statement that customers had made a number of comments to her, of which she gave examples, which suggested that they were confused as between the KitchenAid and kMix mixers. The judge accepted this evidence, though she said that she had probably reported instances of confusion to her manager, but it turned out that she had not done so (paragraph 62). Mrs Evans, a Whirlpool demonstrator at Fenwicks in Brent Cross, reported on some customer comments as to similarity, but also gave evidence of one specific instance. Fenwicks did not stock the kMix, so that, unlike at John Lewis, there could not be a side-by-side comparison. In March 2008, after she had made her first witness statement, a customer came to the KitchenAid section of Fenwicks and asked about a promotional offer of a free blender. She had come from the nearby John Lewis store, where she had learned of this promotion. It was not a KitchenAid promotion, but one associated with sales of the kMix. The customer was told of this, and went back to John Lewis, where this was confirmed. Then she returned to Fenwicks and bought a KitchenAid Artisan there, telling Mrs Evans that she had been confused about the mixers and thought they were the same. Unfortunately the customer's name was not known, and the instance came to light only very shortly before the trial, too late for the customer to be traced. The judge said, at paragraph 63:
"It must, I think, be recognised that although the customer's apparent confusion may have been attributable to perceptions and recollections of shape and appearance as indications of trade origin, that is not an inevitable inference from the evidence I have received."
- In addition Mr Mellor relied on some of the comments of Mrs Watson, Kenwood's expert witness. I can take the main points of this from paragraph 67 of the judgment:
"In cross-examination she agreed that the shape of the KitchenAid mixer is distinctive. She agreed that the brand name KitchenAid would be 'the handle for everything else', including the shape in terms of which design conscious purchasers would naturally be inclined to think of the mixer. She agreed that there is a distinct competitive advantage in being an iconic brand when selling to consumers moving from initial interest through to purchase in this sector of the market. She thought that consumers 'might fleetingly associate the KitchenAid stand mixer with the Kenwood KMix or vice versa' and also that having a similar 'look appeal' potentially attracts customers who would not have looked at the Kenwood Chef, but expected the initial reaction to be very quickly dispelled when potential customers looked properly at the products and observed the differences in style, specification and branding. In circumstances where the kMix had been introduced and sold in the same premium market and to the same type of customers as the KitchenAid mixer she thought that there would have been lots of comment by customers talking to in-store demonstrators about the two products comparatively and was surprised that there were not more comments than there appeared to be from the evidence before the Court. Mrs. Watson gave her evidence fairly. She gave the kMix a reasonably good character reference on the basis of her experience as a commercial buyer. I take note of what she said, without regarding it as decisive of the issues I must determine from the perspective of the relevant average consumer."
- Having introduced the dispute in the case, the CTM and the rival products, and considered evidence as to the design process for the kMix, the judge dealt in some detail with the requirements for registration of a three-dimensional shape as a trade mark, and with the process which led to the registration of the instant CTM. He expressed some reservations as to the process which had led to this registration, but he reminded himself that the mark is presumed to be valid under article 95 of the CTMR, and there was no subsisting challenge to its validity. He said at paragraph 24:
" … the question whether the rights of the proprietor are infringed by the use of another sign must be answered with reference to the registered trade mark as a whole, taking account of the likely perceptions and recollections of the relevant public at the time when the other sign began to be used."
- He then referred to evidence of marketing and sales of the KitchenAid Artisan in the UK and elsewhere in Europe, and came to the survey evidence. He made some comments about survey evidence generally, and then referred to the evidence in the present case in detail. He next considered the evidence of two other witnesses for Whirlpool said to have been confused, then the demonstrators and last the expert witnesses.
- At paragraph 68 he came to the issues of distinctiveness and similarity. He said this:
"My assessment takes account of the evidence and materials that were to be taken as read, as I have previously described. It also takes account of the need for circumspect evaluation of the evidence of the witnesses who passed through the special filter of the 'witness gathering exercise'. I do not accept that the bodywork or finished appearance of the KitchenAid Artisan mixer can to any real extent be regarded as fanciful or capricious. That said, there is in my judgment a degree of specific individuality in the finished appearance of the KitchenAid Artisan mixer which is sufficient, albeit with relatively little scope for deviation from the paradigm form, to render it thereby distinguishable from mixers of a different trade origin in the minds of design conscious consumers. Whirlpool have successfully capitalised on that by making the finished appearance of the Artisan a point of reference for such consumers in the stand mixer market. So much so that the more familiar they are with the mixer, the more likely they are to perceive and remember the finished appearance of it as an indication of trade origin."
- Later in the same paragraph he held that Whirlpool had proved that the finished appearance of the KitchenAid Artisan functions as an indication of trade origin among design conscious consumers in the UK, even without assistance from the word KitchenAid, and that the same was true of the shape represented by the CTM as registered.
- Then he considered whether the issue of infringement was to be decided by reference to design conscious consumers, or to all consumers in the market for all types of mixer within Class 7, and held that the narrower class was relevant, rather than the wider (paragraph 69):
"The ECJ has confirmed that it is the circumstances characterising the allegedly infringing use which must be considered in order to determine the question of liability for infringement. It is necessary to conduct a risk assessment. The tribunal must assess the likelihood of the conduct in question giving rise to consequences of the kind proscribed. The 'average consumer' test standardises the approach to assessment. It does so by requiring the tribunal to judge the matter from the viewpoint of a consumer exercising neither too low nor too high a degree of perspicacity. It does not permit or require the tribunal to exclude any relevant factors from the assessment of risk. The Artisan and the kMix are both premium priced products targeted at design conscious consumers. It follows, in my view, that the question of liability for infringement can properly be determined by taking the presumed expectations of such consumers into account. To hold otherwise would be to apply a test divorced from the actualities of the case."
- He went on in paragraph 70, in a passage on which some reliance was placed on the appeal, to say this:
"In my view, the average consumer is meant to be a person of the type whose mindset and behaviour patterns conform to the norm among reasonably well-informed and reasonably observant and circumspect people in the market for the goods or services in question. That appears to me to bring into consideration the real world thought processes of real people. I therefore think that the appropriate scope of protection should in each case be determined with as great a sense of reality as the circumstances of the case will allow. Empirical evidence should therefore not be ignored. That is the basis on which I am proceeding in this case."
- In paragraph 71 he applied this approach. The paragraph expresses an important part of the judge's reasoning and conclusions:
"In the context of my findings as to distinctiveness, I consider that the presence of a mark identical or similar to the denomination KitchenAid is not essential for a finding that the rights conferred by the Community trade mark registration have been infringed. And I think there is a likelihood that in the United Kingdom (and other Member States where the Artisan mixer was likewise known and recognised) a mixer replicating the finished appearance of the Artisan would, for that reason, be thought to have a commercial origin linked to that of the KitchenAid product, whether or not it carried a denomination that was identical or similar to the denomination KitchenAid. However, the kMix is not a replica of the Artisan. It is, as one of the survey respondents observed when shown Flashcard 3, 'KitchenAid-ish' in its appearance. There is clearly enough similarity for each to remind people of the other. On the other hand, there does not appear to me to be sufficient similarity in terms either of their bodywork or their finished appearance to lull the relevant average consumer into thinking one is the other on seeing them together or separately at different times or in different settings. What is the effect of consumers being aware that the product they are looking at is not the product it reminds them of? If (and I emphasise the word if) they are interested in the provenance of the mixer they are looking at, their natural reaction would be to refer to the badges of origin in the form of the word and device marks conventionally used in relation to the products for the purposes of source identification. That reflects the position that 'average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packing in the absence of any graphic or word element' in a market such as this, where consumers would be alive to the potential for variations in appearance to be indicative of differences in trade origin. It requires no real effort to appreciate that the Artisan is a KitchenAid product and that the kMix is a Kenwood product. No one who was actually contemplating the possibility of spending more than £300 on the purchase of either product would be under any misapprehension as to their true trade origin. KENWOOD is a strong and well-established trade mark for mixers. I can see no likelihood of confusion occurring during the process leading from selection through to purchase of a kMix product."
- The quotation as to the attitudes of average consumers is of text used in judgments of the ECJ in relation to shapes sought to be registered as trade marks, such as Develey Holding GmbH v OHIM Case C-238/06, paragraph 80.
- Then the judge recited relevant parts of article 9, and part of article 12 of the CTMR as well. He addressed Kenwood's argument that the kMix did not embody any sign to which the infringement claim could apply. He rejected that, on the basis that the bodywork of the kMix at least makes "a non-verbal statement to the effect that the kMix is a mixer". Despite accepting that part of Whirlpool's argument, he rejected the claim based on article 9(1)(b) because he held that there would not even be initial confusion on the part of a relevant average consumer, that is to say a likelihood of confusion unless and until the branding of the kMix as a Kenwood impinged on the consciousness of an interested consumer. He said at paragraph 75:
"However, I do not accept that in the present case there will be any initial confusion in the mind of the relevant average consumer. There will, in my view, be nothing more than an awareness that the product they are looking at is not the one it reminds them of. I am not persuaded otherwise by the evidence of the KitchenAid demonstrators. Their evidence relating to the incidents to which they refer provides no firm basis for concluding that there is similarity between the bodywork of the Artisan and that of the kMix sufficient to give rise to a risk that the relevant public might believe the mixers come from the same undertaking or, as the case may be, from economically linked undertakings."
- Thus he held that there was no sufficient likelihood of confusion, at any stage, on the part of a relevant average consumer, and that the article 9(1)(b) claim must therefore fail.
- Then he turned to article 9(1)(c), and accepted, for reasons given in paragraph 76, that the CTM had a reputation in the Community, that is to say in a substantial part of the Community, the UK being sufficient for that purpose.
- He went on to refer to the judgment of the ECJ in Adidas v Marca Mode II, Case C-102/07, to which I will return, and to the necessary element of a link between the sign and the mark in the mind of the relevant public. In paragraph 78, in a passage much relied on by Mr Mellor in support of the appeal, he said this:
"When making the required assessment in a case such as the present it is appropriate to bear in mind that the registration of a Community trade mark cannot validly deprive third parties of the right to use signs of the kind specified in Article 7(l)(e). That Article absolutely excludes from protection by registration:
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves; or
(ii) the shape of goods which is necessary to obtain a technical result; or
(iii) the shape which gives substantial value to the goods;
It seems to me that the policy considerations underlying the sub-paragraphs of Article 7(1)(e) also have a role to play in the determination of the question whether there is similarity between the bodywork of the Artisan and kMix mixers such that the latter without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the former."
- Mr Mellor submits that this reference to article 7(1)(e), not relied on by Kenwood at trial, was heretical on the judge's part, and infected his later conclusion.
- At paragraph 79 the judge directed himself correctly that distinctiveness and similarity are different concepts, each of which must be considered separately in making the global assessment necessary to decide whether there is a sufficient link. He pointed out that a lesser degree of similarity to a more strongly distinctive mark may be just as objectionable under Community trade mark law as a greater degree of similarity to a less strongly distinctive mark.
- His conclusion on the article 9(1)(c) claim is set out in paragraph 80. This is a long paragraph with several important discrete parts. I will set the whole out here. For clarity I have inserted subdivisions identified as (1), (2) and (3), and also letters (a) to (n) in order to facilitate reference to particular sentences within the text:
"(1) (a) As I have said, I consider there is enough similarity between the bodywork of the kMix and that of the Artisan for each to remind people of the other whilst leaving them aware that the one they are looking at is not the one it reminds them of. (b) Is that 'similarity between the sign and the mark' resulting in 'the establishment of a link? (c) Left to my own devices I would have regarded it simply as a calling to mind, rather than the establishment of a link. (d) However, in view of the approach to cross-referential use recently adopted by the ECJ and taking account of the observations of Advocate General Sharpston in her recently delivered Opinion in the Intel case, I think the mnemonic effect I have described should be taken to involve 'the establishment of a link'.
(2) Is it a link which is liable
to take unfair advantage of the distinctive character or repute of the trade mark represented by the bodywork of the Artisan mixer?
to be detrimental to the distinctive character of repute of the [trade mark] represented by the bodywork of the Artisan mixer?
(e) I cannot see that it is. (f) The reminder appears to me to leave the distinctive character and repute of the trade mark represented by the bodywork of the Artisan mixer completely untouched. (g) It is apt to erode the market share of the KitchenAid product, but without impinging upon any aspect of the property appertaining to the trade mark. (h) So it comes within the scope of the principle that:
"No economic operator can claim a right to property in a market share ... a market share constitutes only a momentary economic position exposed to the risks of changing circumstances." [The quotation is from Swedish Match v Secretary of State for Health Case C-210/03, which was not concerned with trade marks.]
(3) (j) The trade mark represented by the bodywork of the Artisan is, as I have said, distinctive with relatively little scope for deviation from the paradigm form. (k) I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. (m) I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for the purposes of Article 9(1)(c). (n) I am not persuaded otherwise by the evidence indicating that consumers may or will be drawn into choosing the kMix by reason of its resemblance to the Artisan. (o) Resemblance can have that effect without being objectionable from a trade mark point of view. (p) The claim for infringement under Article 9(1)(c) is not made out on the evidence and materials before me."
- Mr Mellor submitted that paragraph 80 contains a misdirection of law, at (m), in that the judge appears to apply a different standard or test in relation to matters of infringement because the mark is a shape from that which he would apply in the case of another kind of mark, such as a word. He also submitted that the paragraph contains two findings of fact in his favour: one at (g) to the effect that the link between the mark and the sign is likely to erode the Whirlpool's market share, and the other, to similar effect, at (n), as to the evidence of the effect of the similarity of shape and mark on the economic behaviour of relevant consumers. Some attention was also given during argument to the passage at (j), which repeats a phrase used at paragraph 68: "with relatively little scope for deviation from the paradigm form".
- The judge expressed his conclusions on factual issues but by and large did not make specific findings as to the effect of the evidence which he heard and read. One finding that he did make was as to the absence of any serious risk of confusion between the CTM mark and the kMix shape in the mind of the relevant average consumer, even at an initial stage, in the sense that a consumer might think that the kMix was similar in shape to the KitchenAid Artisan, and therefore think that it was made by the same undertaking as made the KitchenAid Artisan. That is clear from paragraphs 71 and 75. That was the basis of his rejection of the claim under article 9(1)(b).
- Mr Purvis Q.C., for Kenwood, argued that when the judge was considering the question of similarity, and the link, at paragraph 71, he used the word "people" (in the phrase "enough similarity for each to remind people of the other") in a sense which is not limited to relevant average consumers, and that this was a flaw in his analysis. I do not accept that argument, and not only because it is unlikely, given Mr Hobbs' great experience of trade mark law and practice, that he would have made an elementary mistake of that kind. Paragraph 71 follows directly on from three paragraphs in which the judge considered in terms the argument as to what kind of consumer is relevant for this purpose, and concluded that it is the average design conscious consumer, willing to spend a significant sum on an appliance, partly because of its design qualities. It would be bizarre if he had slipped, for a single sentence, into applying what he had just held to be the wrong test. Moreover, as a matter of language, in paragraph 70 he spoke in terms of the qualities of the hypothetical average consumer, and spoke in that context of "real people", clearly meaning real examples of the class of person which he had just identified. He then went on in paragraph 71 to speak of "people", in the sentence under consideration, and in the next sentence of "the relevant average consumer". In turn, in paragraph 80, at the sentence which I have labelled (a), he referred back to paragraph 71 in terms, and collated both the sentence under consideration and the next following sentence, but using "them" in the latter context. That seems to me to make it plain, if it were not already, that "people" in the first of the sentences from paragraph 71, means the same people as the relevant average consumer mentioned in the next sentence. There are some phrases in the judgment where I do not find it altogether easy to determine the judge's meaning, but this is not one of them.
- In sentence (g) of paragraph 80(2), the judge said that "it" is apt to erode KitchenAid's market share. Mr Mellor argued, as a matter of strict language, that the word "it" must refer back to what has last previously been spoken of, namely the reminder, which is the basis of the judge's finding of link. It is partly on that footing that he argued that the judge made a finding of fact that relevant average consumers would buy a kMix, rather than a KitchenAid Artisan, because of being reminded of the KitchenAid Artisan by the appearance of the kMix. If that is what the judge meant by this sentence, it seems to me that it would contrast oddly with the rest of his judgment, at any rate as regards passages where he expressed an opinion as to the effect of the similarity.
- Mr Mellor sought to fortify this submission by what he said about the sentence which I have marked as (n) in paragraph 80(3). He submitted that this sentence is a finding that consumers will be drawn into choosing to buy the kMix by reason of its resemblance to the KitchenAid Artisan. He also pointed to the judge's comment in the next sentence, (o), as supporting this reading. If sentence (n) were intended as such a finding, it would be a very odd and oblique way to make and express it. It seems to me that the only proper way to read that sentence is that it is not a finding of fact at all. It is a reference to the fact that there was some evidence which could support a contention that the similarity between the two machines might influence a consumer into buying the kMix. The sentence cannot be read as an endorsement of that proposition, for at least three reasons. One is that the judge used the words "may or will", so he clearly did not accept the evidence as showing that any consumer "will" be so influenced. Secondly, the word "indicating" is far from the sort of expression one would naturally use or expect to see used to convey an actual finding of fact as to the effect of the evidence referred to. Thirdly, the opening words of the sentence, "I am not persuaded otherwise by" the evidence, put the whole sentence into a negative context. The judge's use of that phrase suggests to me that he may have had the evidence of the demonstrators in mind, of which he said at paragraph 75 that he was "not persuaded" by it of any likelihood of even initial confusion. The sentence in paragraph 80 at (n) might be expressed in other words, for example as follows: "There was evidence which indicated that consumers might or would be drawn into choosing the kMix by reason of its resemblance to the KitchenAid Artisan. Despite that evidence, in my judgment the bodywork of the kMix is not relevantly similar to that to the KitchenAid Artisan to a degree which impinges on the distinctiveness of the trade mark so as to satisfy the specific condition of liability." In my judgment that is what the judge intended to convey by that sentence, (n); as such, it cannot be read as an acceptance of the evidence or a finding that consumers would be influenced in the way suggested. His sentence (o) is not inconsistent with that reading. It says no more than that, even if there were such an effect, it would not necessarily give rise to an infringement of any kind.
- Mr Purvis invited us to examine what the evidence was to which the judge was referring in sentence (n). He submitted that there was nothing that could have provided a sound basis for such a finding, even if the judge's language should have been read as amounting to a finding to that effect. Mr Mellor on the other hand pointed to several passages in the evidence which he said did support the finding which he contended the judge had made.
The survey witnesses
- The survey witnesses who were said to be relevant for this purpose, or more generally as to the effect of the link, as found, on the economic behaviour of a relevant average consumer, on either side, were Roger Adams, Anne Banks, Mirja Bauer, Laura Dubois, Jane Grey, Ella Sara Hershman, Joanne Langston, Victoria Leffman, Anne Mansey, Patricia Morrison, Ruth Pitcher and Pamela Stoker. I omit Bethany Hughes from this list as her evidence seems to have been strongly affected by her regarding KitchenAid as a generic description, rather than as a brand name.
- Particular attention was given to the few of these who did not already own or use a KitchenAid, and who were interested in acquiring a mixer. One was Laura Dubois. She provided a witness statement and was not required for cross-examination. She said a number of things in her witness statement which appear to conflict. Thus, describing her reaction on seeing the flashcard (the fourth) she said this:
"As soon as I saw the [flashcard] I thought it was a KitchenAid stand mixer. It looked retro, like a 1950s style. It looked like a KitchenAid mixer, particularly its shape and colour. The red of the mixer on the photo on the card caught my eye. Before answering the questionnaire I had seen an all red stand mixer, which I think was a KitchenAid, in John Lewis or Selfridges. I remember the retro shape. I particularly associate KitchenAid with red. When I saw the card it called to mind that I was thinking of getting a similar one – a Kenwood "K" something. I like its design. The design of the mixer in the photo felt like something I had seen before and really liked."
- Thus, she associated what she saw (in fact a picture of the kMix) both with a KitchenAid Artisan and with a Kenwood which she was thinking of getting. Then she said this:
"They [the kMix] looked like a cheap version, a copy, of the original KitchenAids. A nasty copy of the original. The Kenwoods are trying to be trendy with different colours. KitchenAids are in fashion, so it seems to me that Kenwood has decided 'Let's do something that looks like it but not exactly the same, and keep Kenwood so people know it's us'."
- Thus she was not confused as to the trade origin of either product, and she clearly preferred the KitchenAid Artisan.
- Joanne Langston was another in this group, identified through the telephone survey. She was not cross-examined. She was shown the fourth flashcard and said she thought it looked exactly like the one that Nigella Lawson had used, though she did not know the brand of that item. She had also seen on the John Lewis website a mixer which she thought was a Kenwood, and she said was exactly like the one on the flashcard (except for being in a different colour). When she saw the debranded KitchenAid Artisan she did not know what brand it was. When she saw the kMix models she recognised them as Kenwood products, though she thought they were the same shape as that which Nigella Lawson used, and did not begin to query that until she saw the branded KitchenAid Artisans. She said the two products looked similar, but she preferred the Kenwood for its shape, which would attract her to it.
- The third in this group to whom particular attention was given in submissions was Ruth Pitcher. She was part of the general survey, having been approached outside Page's kitchen shop in Shaftesbury Avenue. She did not own a stand mixer and coveted a KitchenAid Artisan, though it was not clear that she was likely to be acquiring one in the near future. She thought that the image on the flashcard was of a KitchenAid Artisan. Her witness statement recorded no reaction to the debranded KitchenAid Artisan, but said that she recognised the kMixes as being Kenwood products and the branded KitchenAid Artisans as what they were. She had a clear preference for the KitchenAid Artisan. She said this:
"I'm afraid that the Kenwoods look like a cheap imitation of the KitchenAid. KitchenAid is probably about £350 but the Kenwoods are probably about £150 each. Seeing them together I could tell that the Kenwood was not of the same quality as the KitchenAid. The fact that the kMix looks like the KitchenAid mixer would mean that I would take a closer look at the kMix if I were shopping for a kitchen stand mixer. Its lines, style and colour would attract me to it. But once I got hold of it I would be put off by its quality. The KitchenAid mixer has a reputation for being robust, indestructible, heavy and durable."
- All three of these witnesses reveal the phenomenon of imperfect recollection which is undoubtedly significant in this field. None of them, as it seems to me, provides evidence that an average consumer's economic behaviour would be influenced adversely to the KitchenAid Artisan by any perceived similarity between the shapes of the two products. Laura Dubois and Ruth Pitcher clearly preferred the KitchenAid Artisan and would not be put off that preference in favour of the kMix. Joanne Langston preferred the Kenwood product because of its shape, which she preferred to that of the KitchenAid Artisan, that is to say, she would be influenced in her choice by the differences between the two shapes, not by the similarities.
- Two others of the witnesses relied on in this context were not KitchenAid Artisan owners: Roger Adams and Ella Sara Hershman, though Roger Adams had used a KitchenAid Artisan borrowed from a friend. He was not an example of a relevant average consumer because he said he would not be influenced by the appearance of a product. He would look for durability and reputation, which he said he knew KitchenAid Artisans to have.
- Ella Sara Hershman was approached through the telephone survey. The judge referred to her evidence at paragraph 53. She was interested in buying, and would like to buy a KitchenAid Artisan. Unlike the others that I have mentioned, she was cross-examined. As with a number of witnesses, she thought the mixer shown on the flashcard was a KitchenAid Artisan, part of her reason for that being that she did not associate Kenwood with a stylish well-designed product. Asked about whether and if so how the appearance of the mixers would influence her decision as to which to buy, she said:
"If I were to buy a stand mixer, if I were looking for that style, I would certainly look at the Kenwood and the KitchenAid and compare both, given the similarities. I know KitchenAids are very good. If they were the same price, I would go for the KitchenAid mixer."
- In cross-examination, as to why she would like to buy a KitchenAid Artisan, she said that she thought them to be "very stylish and very nice". Her evidence in cross-examination as to why she had said what she did in her witness statement was quite unclear, and suggested that she did not recall the occasion well. One thing she did say was that one of the factors in her thinking the two products to be similar was the bowl of the KitchenAid Artisan, something which does not form part of the CTM or, therefore, of Whirlpool's case under article 9(1)(c).
- Among those witnesses who already owned or used a KitchenAid Artisan, Jane Grey included a sentence in her witness statement on which the Claimants place some reliance: "If I were looking to buy a stand mixer and saw the kMix I would take a look at it because of its shape and style." But this needs to be seen in the context of the next two sentences: "But if it didn't have the KitchenAid name on it then I would not buy it. I'm a convert to KitchenAid."
- Victoria Leffman, also a KitchenAid Artisan owner, said something similar:
"The fact that the shape of the Kenwood is similar to the KitchenAid would cause me to take a look at it - to click on it on a website or go over and have a look at it in a shop. But before buying it I would look carefully at it, and when I'd examined it I would realise that it wasn't as good as a KitchenAid stand mixer. I'd still go for a KitchenAid stand mixer. It might affect others' choice in terms of style but I would be more interested in what they all do."
- Mr Mellor might have been able to get more from the evidence of Mirja Bauer, who has a KitchenAid Artisan at home, as does her mother, but who thought better of Kenwoods than do some KitchenAid Artisan owners. In her witness statement, as to whether and how she would be affected in a decision to buy by the appearance of the mixers, she said:
"For the style, I would still go with the KitchenAid because I like the 1950s style and it is timeless. It would fit into a modern kitchen. I like the Kenwoods here because they are split into two colours and I like that. I would have confidence buying the Kenwoods because of their brand name. The Kenwoods look very similar to the KitchenAids. I would be more likely to purchase the kMix because they look similar to the KitchenAid stand mixer. I associate KitchenAid with quality, so would be more likely to buy the kMix or be willing to buy it because it looks like the KitchenAid stand mixer. KitchenAid has a good reputation."
- Then in cross-examination, she said she liked the KitchenAid Artisan:
"I love how it works and it is great quality so I would probably buy that. The other one I like because it is more modern so it could kind of go into a contemporary flat, maybe for younger people. If I did not have one, I would probably have to make a decision between the two.
Q. It would depend on the style of your kitchen?
A. Yes, exactly."
- She explained her statement in the penultimate sentence of the paragraph quoted in paragraph  above as referring to a stage in the process when she thought the kMix was a prototype of a new version of the KitchenAid Artisan. She also said that during the process of looking at the appliances in the solicitors' offices she did not really think about them from a branding point of view, instead she was thinking about the design point of view.
- Paula Stoker, asked about any effect on a possible purchasing decision, said:
"If I were looking to purchase another kitchen stand mixer, I would go for the one I prefer the look of, the KitchenAid mixer. I'd also go for the KitchenAid name. But the fact that the kMix resembles the KitchenAid may mean that I would at least take a look at it if I saw it in a shop or on a website."
- In her answers to the questionnaire, in response to the question "Does the shape tell you anything about the product", she said, among other comments, "It seems the obvious shape for a mixer".
- Patricia Morrison, another long-standing and convinced KitchenAid Artisan user, said:
"I would stick with my KitchenAid. I prefer the design of it to the Kenwoods. The Kenwoods are more straightforward, less complicated but curves always give something more interest. The Kenwoods don't have as many curves. I may be diverted over to the kMix, to take a look at it, because its shape is reminiscent of the KitchenAid. I'd take a look at both if I was buying another mixer."
- Anne Mansey, who is a chef, has owned a KitchenAid Artisan for three years and has used them a lot, said something rather similar:
"Because I know how reliable the KitchenAids are I would go for a KitchenAid. To me it is a known quantity and I know they are reliable. I asked for a KitchenAid for Christmas. The similarity between the kMix and the KitchenAid would get me to go and take a look at the kMix if I saw it in a shop, out of curiosity. I would go and have a look at it to see who was doing this."
- She was asked about that in cross-examination:
"Q, Presumably any sort of attractive looking new mixer would have a similar effect on you?
A. Not necessarily. Some might do, but I think with one like that [i.e. the kMix], I would, out of curiosity, go and have a look at it, yes?
Q. And do you like the look of it?
A. I know which I prefer. I am sorry.
Q. I am not trying to sell you one!
A. I just know the old faithful."
- Her witness statement suggested, and her cross-examination confirmed, that one important element in her feeling that the two products were similar was the bowl.
- The last of the witnesses relevant for this purpose is Anne Banks. The judge referred to her evidence at paragraph 54. In her witness statement, her evidence about the possible effect on her in the hypothetical event of her wanting to acquire a new mixer, was this:
"The fact that the kMix looks like the KitchenAid mixer would make me more likely to buy it. It looks good. I quite liked it. It would probably have a positive effect on me. I would have looked at the kMix. I always thought Kenwoods were old-fashioned, which is strange when you consider the KitchenAid mixer looks like they come from the 1930s. My impression of Kenwood mixers is that they are big chunky heavy and old-fashioned, and usually in white – but the kMix looks good."
- In cross-examination on this point there was the following exchange:
"A. Obviously I wanted a KitchenAid. So if I was going shopping by myself I possibly would be swayed by this design because –
Q. Because you like it.
A. Yes, it looks nice. It looks like the KitchenAid in my opinion.
Q. If it looks like the KitchenAid, then what is the advantage? You may as well buy the KitchenAid. Presumably you buy it because you preferred it.
A. I didn't buy it.
Q. If you were going to buy it at all, it would be because you preferred the look of it.
A. I think that looks do have something to do with it. It looks similar."
The judge's findings on the evidence
- I have gone into that aspect of the evidence in more detail than would normally be appropriate on appeal, because of the reliance placed on some of these witnesses' evidence on each side, particularly in relation to the judge's sentence at paragraph 80(3)(n). It seems to me that the evidence of these witnesses is an important part of the evidence to which the judge referred in that sentence, though as mentioned above (paragraph ) he may also have been thinking of the demonstrators' evidence. He had other evidence as well, including Kenwood's expert, but that would be at best very peripheral on this point.
- Having reviewed the evidence of these witnesses, it seems to me that while it was, of course, for the judge to decide what weight to place on any of it, it would have been difficult to conclude that it did make out a case of any strength in favour of saying that the economic behaviour of a relevant average consumer would be influenced in any significant way in favour of Kenwood by the person being reminded of the KitchenAid Artisan by the shape of the kMix. Each of the three witnesses most relevant, namely those who did not own or use a KitchenAid Artisan and who were or might be in the market to acquire a stand mixer, had decided views of her own in favour of one brand or the other, and such similarities are there were between the two shapes would not influence any of them in a decision which to purchase.
- The fact that some witnesses said that, if (hypothetically) they were in the market for a new mixer and saw the kMix in a shop or on a website, they would take a closer look at it, because of its resemblance to the KitchenAid Artisan, seems to me an altogether inadequate foundation for a conclusion that a relevant average consumer who was thinking of buying would be influenced by the resemblance in making a buying decision. I have already quoted (at paragraph  above) what the judge said at paragraph 71 about the process by which an average consumer would come to a decision what product to buy. That seems to me a very strong indication against Mr Mellor's submission on this point. It must be borne in mind that this is a relatively sophisticated market, involving discriminating consumers and significant expenditure. So far as concerns stand mixers appealing to design conscious consumers willing to spend £300 or more, only one product had been available, and the kMix was a brand new entrant to the market. On the one hand, the hypothetical (or paradigm) reasonably well-informed and reasonably observant and circumspect consumer would be expected to be aware of this new product in the relevant market, which might not be the case if the new product was one of ten or twenty, rather than only the second of two. On the other hand, since the new product is in certain respects inevitably similar to the other, just because it performs the functions of a stand mixer, a degree of similarity of appearance between the two is almost unavoidable.
- In the light of what I said at paragraph  above, and of my comments on the witnesses who appear to be those whom the judge would have had in mind, I do not accept Mr Mellor's submission that in the sentence at paragraph 80(3)(n) the judge made a finding that relevant average consumers would be influenced in their economic behaviour in favour of Kenwood by reason of the resemblance of the kMix to the CTM. I consider that, in that sentence, he referred to there being some evidence to that effect, but he did not accept that it justified such a conclusion.
- Going back to the judge's sentence (g) in paragraph 80(2), and the question to what did the judge refer by the opening word "It", it seems to me that to read this (as is strictly correct, as a matter of syntax) on the footing that the opening word "It" refers to the link or reminder is not consistent with what the judge said elsewhere about the effect of the similarity, nor with the reading of the sentence at paragraph 80(3)(n) which I have explained above. It seems to me that "It", in sentence 80(2)(g), means the kMix itself, as the new entrant to the market of which the KitchenAid Artisan previously had sole possession.
- The judge's phrase about "deviation from the paradigm form" could be of importance in that it has a bearing on the nature of his conclusion as to distinctiveness. I confess to being a little puzzled by this phrase. Both Counsel suggested that the reference to the "paradigm form" was to the form of the KitchenAid Artisan itself. For myself I would have read this as referring more naturally to the essential form of a stand mixer: what was referred to before us as the C-form, with a substantial base which not only holds the appliance steady but also allows the mixing bowl to be fitted in securely, then an upright section, and thirdly the upper horizontal section or head on which the individual mixing tools are fitted for use in the bowl. The judge included images of a wide variety of stand mixers at paragraph 26 (originally provided by the Kenwood expert in her report), showing a number of variations on what might well be called a paradigm form. However, if the reference is to that, I cannot easily explain the use of the phrase "relatively little scope for deviation" from that form. The different mixers illustrated a considerable range of variations from the paradigm form, of which the KitchenAid Artisan is one. In any event, it is not easy to see why the judge should have spoken of "scope for" variation, rather than of actual variation, if the paradigm form was that of, as it were, the essence of a stand mixer, given that he was speaking of the particular variant represented by the KitchenAid Artisan. So Counsel may be right that the judge's paradigm form is the "paradigm KitchenAid Artisan". In that case, the reference to "relatively little scope for deviation", in the context of distinctiveness and of "a degree of specific individuality" in the appearance of the KitchenAid Artisan (see paragraph 68), seems to me to refer to there being only a relatively narrow range of variation from this particular form within which the distinctive quality would or could persist or be maintained. To go back to the judge's sentence in paragraph 68 in which he first used this phrase (quoted at paragraph  above), the main point of the sentence is clear, as can be seen by deleting the phrase under consideration: "there is in my judgment a degree of specific individuality in the finished appearance of the KitchenAid Artisan mixer which is sufficient … to render it thereby distinguishable from mixers of a different trade origin in the minds of design conscious consumers". The phrase about deviation from the paradigm form seems to be a qualification or limitation of the general proposition.
- Whatever may be the precise meaning that the judge sought to convey, I read it as intended to show that the distinctiveness of the finished appearance is sufficient to act as a sign of trade origin in some circumstances, for example (as he said at the beginning of paragraph 71) as compared with another mixer of identical appearance, but that a relatively small amount of variation from the appearance of the KitchenAid Artisan would be sufficient to differentiate another mixer from the KitchenAid Artisan in the minds of relevant average consumers. In that sense, "relatively little scope for deviation" refers to the limited range of the possible variants from the actual appearance of the KitchenAid Artisan which would be thought by relevant average consumers to indicate that the rival mixer was of the same trade origin as the KitchenAid Artisan.
European trade mark cases
- Before I analyse the judge's findings and conclusions further, I must refer to some of the cases relied on before us, particularly among the evolving series of cases referred to the ECJ on relevant trade mark issues. The law in this respect has been a moving target: the judge had the benefit of Advocate General Sharpston's opinion on one case, on which the ECJ has given judgment since the date of the judge's judgment, but we have the benefit of an opinion of Advocate General Mengozzi in another case, on another reference by this court and, delivered after the argument on the appeal, the ECJ's judgment in that case. The point is one which is entirely new to English law, and I have found it desirable to quote rather extensively from some of the decisions.
- The judge quoted from the judgment of the ECJ in Adidas v Marca Mode II, Case C-102/07 at his paragraph 77. I will repeat his citation and add one paragraph, next after those which he quoted, on which Mr Mellor based part of his arguments on the appeal. (I omit the supporting case references, here and in later quotations.)
"40. Article 5(2) of the Directive establishes, for the benefit of trade marks with a reputation, a form of protection whose implementation does not require the existence of a likelihood of confusion. Article 5(2) applies to situations in which the specific condition of the protection consists of a use of the sign in question without due cause which takes unfair advantage of, or is detrimental to, the distinctive character or the repute or the trade mark.
41. The infringements referred to in Article 5(2) of the Directive, where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them. It is not therefore necessary that the degree of similarity between the mark with a reputation and the sign used by the third party is such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.
42. The existence of such a link must be appreciated globally, taking into account all the relevant factors relevant to the circumstances of the case.
43. It is clear that the requirement of availability is extraneous both to the assessment of the degree of similarity between the mark with a reputation and the sign used by the third party and to the link which may be made by the relevant public between that mark and the sign. It cannot therefore constitute a relevant factor for determining whether the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
- Mr Mellor submitted that what the judge said in his paragraph 78 conflicted with what the ECJ said in paragraph 43, and that issues relevant to validity have no bearing on whether a trade mark, presumed to be valid, has been infringed.
- The judge had also, and referred to, the Advocate General's Opinion in Intel Corporation v CPM UK Ltd Case C-252/07. The ECJ's judgment in that case was delivered on 27 November 2008. That was a case under the Directive rather than the CTMR, but on articles 4(4)(a) and 5(2) of the Directive which are equivalent to article 9(1)(c) of the CTMR. It concerned a very well known mark, used for particular goods, and the use of a later registered mark, which was said to be similar, in relation to completely different services. The judgment contains some passages which assist on the points in the present case, even though we are concerned with similar goods, not with dissimilar goods or services. At paragraphs 26 to 32 the Court in part restated and in part elaborated on points already made in Adidas v Marca Mode II:
"26. Article 4(4)(a) of the Directive establishes, for the benefit of trade marks with a reputation, a wider form of protection than that provided for in Article 4(1). The specific condition of that protection consists of a use of the later mark without due cause which takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark.
27. The types of injury against which Article 4(4)(a) of the Directive ensures such protection for the benefit of trade marks with a reputation are, first, detriment to the distinctive character of the earlier mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark.
28. Just one of those three types of injury suffices for that provision to apply.
29. As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.
30. The types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them.
31. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
32. However, the existence of such a link is not sufficient, in itself, to establish that there is one of the types of injury referred to in Article 4(4)(a) of the Directive, which constitute, as was stated in paragraph 26 of this judgment, the specific condition of the protection of trade marks with a reputation laid down by that provision."
- The Court reiterated the familiar identification of the relevant public at paragraph 34, and went on to make a point which, in itself, does not arise in the present case but shows something of the Court's thinking about the different ways of satisfying the specific condition under article 9(1)(c), in paragraphs 35 and 36:
"35. Accordingly, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect.
36. Secondly, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect."
- The particular point there discussed does not arise here because the same body of consumers is relevant to both products. "Drawing of benefit" from the mark is perhaps no more than a different way of saying "taking advantage". It does not reveal anything about the circumstances in which the advantage is taken unfairly.
- As regards proof, the Court observed that the proprietor of the mark must prove the fact of unfair advantage, or detriment, or the serious risk of either occurring in the future, whereas if issue is taken as to "due cause", it is for the later user to show that there is due cause for the use of the mark. In the present case Kenwood did not assert that any use made was with due cause, so that point does not arise.
- The questions referred sought guidance as to the criteria for the establishment of the necessary link. On that point the Court said this:
"41. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case.
42. Those factors include:
the degree of similarity between the conflicting marks;
the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
the strength of the earlier mark's reputation;
the degree of the earlier mark's distinctive character, whether inherent or acquired through use;
the existence of the likelihood of confusion on the part of the public.
43. In that respect, the following points must be made.
44. As regards the degree of similarity between the conflicting marks, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. That is particularly the case where those marks are identical.
45. However, the fact that the conflicting marks are identical, and even more so if they are merely similar, is not sufficient for it to be concluded that there is a link between those marks.
46. It is possible that the conflicting marks are registered for goods or services in respect of which the relevant sections of the public do not overlap.
47. The reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public.
48. It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.
49. Furthermore, even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.
50. Accordingly, the nature of the goods or services for which the conflicting marks are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks.
51. It must also be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered.
52. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.
53. For the purposes of assessing where there is a link between the conflicting marks, it may therefore be necessary to take into account the strength of the earlier mark's reputation in order to determine whether that reputation extends beyond the public targeted by that mark.
54. Likewise, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind.
55. Accordingly, for the purposes of assessing whether there is a link between the conflicting marks, the degree of the earlier mark's distinctive character must be taken into consideration.
56. In that regard, in so far as the ability of a trade mark to identify the goods or services for which it is registered and used as coming from the proprietor of that mark and, therefore, its distinctive character are all the stronger if that mark is unique – that is to say, as regards a word mark such as INTEL, if the word of which it consists has not been used by anyone for any goods or services other than by the proprietor of the mark for the goods and services it markets – it must be ascertained whether the earlier mark is unique or essentially unique.
57. Finally, a link between the conflicting marks is necessarily established when there is a likelihood of confusion, that is to say, when the relevant public believes or might believe that the goods or services marketed under the earlier mark and those marketed under the later mark come from the same undertaking or from economically-linked undertakings.
58. However, as is apparent from paragraphs 27 to 31 of the judgment in Adidas-Salomon and Adidas Benelux, implementation of the protection introduced by Article 4(4)(a) of the Directive does not require the existence of a likelihood of confusion.
59. The national court asks, in particular, whether the circumstances set out in points (a) to (d) of Question 1 referred for a preliminary ruling are sufficient to establish a link between the conflicting marks.
60. As regards the circumstance referred to in point (d) of that question, the fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind is tantamount to the existence of such a link."
- The passage at paragraphs 46 to 52 is not of much relevance to the present case, where the mark and the sign are used in relation to similar goods aimed at the same public. However, paragraph 60 shows that the judge was right as a matter of law in his approach to whether the necessary link was established, at paragraph 80(1). He was right to take the approach of a global assessment (see paragraph 79) and to take account (as he mentions in that paragraph) of the degree of strength of the distinctive character of the mark, and of the degree of similarity between the mark and the sign: see paragraphs 42 and 56 of the judgment in Intel.
- The Court went on, in addressing the remaining questions referred, to give guidance as to finding injury to the earlier mark or unfair advantage taken of it, at paragraphs 66 to 79:
"66. First, as was pointed out in paragraph 30 of this judgment, the types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them.
67. The more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark.
68. It follows that, like the existence of a link between the conflicting marks, the existence of one of the types of injury referred to in Article 4(4)(a) of the Directive, or a serious likelihood that such an injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the criteria listed in paragraph 42 of this judgment.
69. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the Court has already held that the stronger the earlier mark's distinctive character and reputation the easier it will be to accept that detriment has been caused to it.
70. Secondly, the circumstances listed in points (a) to (d) of Question 1 are not sufficient to establish the existence of unfair advantage and/or detriment within the meaning of Article 4(4)(a) of the Directive.
71. So far as concerns, in particular, the fact referred to in point (d) of that question, as follows from paragraph 32 of this judgment, the existence of a link between the conflicting marks does not dispense the proprietor of the earlier trade mark from having to prove actual and present injury to its mark, for the purposes of Article 4(4)(a) of the Directive, or a serious likelihood that such an injury will occur in the future.
72. Lastly, as regards, more particularly, detriment to the distinctive character of the earlier mark, the answer to the second part of the third question must be that, first, it is not necessary for the earlier mark to be unique in order to establish such injury or a serious likelihood that it will occur in the future.
73. A trade mark with a reputation necessarily has distinctive character, at the very least acquired through use. Therefore, even if an earlier mark with a reputation is not unique, the use of a later identical or similar mark may be such as to weaken the distinctive character of that earlier mark.
74. However, the more 'unique' the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character.
75. Secondly, a first use of an identical or similar mark may suffice, in some circumstances, to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future.
76. Thirdly, as was stated in paragraph 29 of this judgment, detriment to the distinctive character of the earlier mark is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark.
77. It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.
78. It is immaterial, however, for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark.
79. The answer to point (ii) of Question 1 and to Question 3 must therefore be that Article 4(4)(a) of the Directive is to be interpreted as meaning that whether a use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark, must be assessed globally, taking into account all factors relevant to the circumstances of the case."
- Thus, paragraph 67 confirms the importance of taking into account the strength (or otherwise) of the distinctiveness of the mark, and paragraphs 68 and 79 show that the fact or likelihood of detriment or of unfair advantage must be considered on the basis of a global assessment, taking into account the factors mentioned in paragraph 42 as well as any other relevant matters. Detriment to the distinctive character of the mark requires proof of a change in the economic behaviour of the average consumer consequent on the use of the sign, or a serious likelihood of such a change (paragraph 77), irrespective of any real commercial benefit to the undertaking using the sign being drawn from the distinctiveness of the mark (paragraph 78). The latter factor, by contrast, would be relevant to the issue of unfair advantage.
- The Court said little in its judgment in Intel about unfair advantage. Advocate General Sharpston had covered this subject at paragraphs 62 to 67 of her opinion in the case, before dealing with "blurring", that is to say detriment to the distinctive character of the mark, and then tarnishing, or detriment to the repute of the mark. Although not binding, this is worth citing, to show what the judge had before him, and for the guidance it gives on the point:
62. The concept of 'unfair advantage' focuses on benefit to the later mark rather than harm to the earlier mark. What must be established is some sort of boost given to the later mark by its link with the earlier mark. If, despite its reputation, the connotations of the earlier mark have a dampening or even merely neutral effect on the performance of the later mark, unfair advantage seems less likely. In the hypothesis, for example, of a select range of expensive hand-made jewellery sold under the trade mark 'Coca-Cola' or a similar mark, it does not seem inevitable that the marketing of the jewellery would benefit unfairly (or at all) from the Coca-Cola Company's trade mark.
63. In that light, the facts set out in question 1 seem too flimsy on their own to support a finding of free-riding.
64. It is, of course, necessary as a precondition for such a finding that the earlier mark should have a reputation and that the later mark should bring the earlier mark to mind for the average consumer. There is (at least since Davidoff II) no necessity for the goods or services covered by the two marks to meet any particular standard of similarity or dissimilarity. Nor can it be concluded, simply from the fact that the earlier mark is unique, that the later mark takes unfair advantage of it.
65. That said, it seems clear that, as the reputation and distinctiveness of the earlier mark, and the similarity between the goods or services covered by the two marks, increase, so will the likelihood that the later mark will derive advantage from any link established between the two in the mind of the public.
66. But more is needed. If the later mark is to derive unfair advantage, the associations of the earlier mark must be such as to enhance the performance of the later mark in the use that is made of it. A relevant factor to consider, therefore, will be the relationship between the prestigious connotations of the earlier mark and the context in which the later mark is used. Any advantage may well be greater if the earlier mark is unique, but there is nothing in the legislation to suggest that protection against free-riding can vary according to the extent of the unfair advantage derived.
67. If the later mark has already been registered and used (as in the main proceedings), or if it is a sign whose use it is sought to prevent under Article 5(2), it may well be possible to provide consumer survey evidence indicating whether there has been any boosting or enhancing effect on the later mark as a result of the existence of the earlier mark. If, under Article 4(4)(a), it is a question of preventing the registration of a mark that has not yet been used, such evidence may be less easy to obtain, and inferences may have to be drawn from all the circumstances of the case as to the likely effect."
- The subject of unfair advantage has been considered in two cases cited to us, one before the First Board of Appeal of the Office for the Harmonisation of the Internal Market, Mango Sport System SRL v Diknah SL Case R 308/2003-1, and the other in the Court of Appeal, and in due course in the ECJ, L'Oréal v Bellure:  EWCA Civ 968, and Case C-487/07.
- In Mango, the issue was as between a mark registered for clothing for men women and children, and a claim to register the same mark for protective helmets for work sport and leisure purposes, the owner of the former mark opposing the application to register the latter. The Board of Appeal, addressing issues under article 8(5) of CTMR which are substantially equivalent to those under article 9(1)(c), referred to propositions familiar from cases to which I have already referred, and addressed the general principles relevant to unfair advantage at paragraphs 19 to 22:
"19. As to unfair advantage, which is in issue here since that was the condition for the rejection of the mark applied for, that is taken when another undertaking exploits the distinctive character or repute of the earlier mark to the benefit of its own marketing efforts. In that situation that undertaking effectively uses the renowned mark as a vehicle for generating consumer interest in its own products. The advantage for the third party arises in the substantial saving on investment in promotion and publicity for its own goods, since it is able to "free ride" on that already undertaken by the earlier reputed mark. It is unfair since the reward for the costs of promoting, maintaining and enhancing a particular trade mark should belong to the owner of the earlier trade mark in question.
20. In that regard, it should be observed that the stronger the earlier mark's distinctive character and reputation the easier it will be to accept that unfair advantage has been taken or detriment has been caused.
21. Furthermore, the closer the similarity between the marks the greater is the risk that unfair advantage will be taken. An identity or a very high degree of similarity is a factor of particular importance in establishing if an unfair advantage will be taken.
22. The greater the proximity between the goods and the circumstances in which they are marketed, the greater the risk that the public in question will make a link between the mark and the sign in question. The existence of the similarity of the goods may be taken into account to the extent that the greater the similarity between the goods in question, the greater the risk that unfair advantage will be taken of the earlier mark."
- Applying those principles to the facts, the Board of Appeal held that the success of the opposition in the office had been correct. Paragraph 35 summarises the most relevant factors:
"35. Given the identity of the marks, the complementary nature of the goods, and the fact that the word MANGO is highly distinctive in relation to the goods concerned, and the extensive nature of the reputation throughout Spain, unfair advantage within the meaning of Article 8(5) cannot be excluded. It is highly likely based on those considerations that the applicant will benefit from and free ride on the opponent's successful marketing efforts. In that sense it will derive an unfair advantage in Spain from the link the relevant public will make to the earlier mark which already enjoys substantial reputation there."
- In L'Oréal v Bellure, the competing products were similar, namely perfumes, but they were at opposite ends of the market. L'Oréal sold fine fragrance brands: premium price brands, with selective distribution, expensive packaging and presentation, heavily advertised and strongly promoted. The Defendants sold smell-alike, or replica fragrance brands. These are imitations, but not counterfeits, of fine fragrance brands, and they trade on their image, being sold at retail prices well below those of the premium priced brands. L'Oréal complained of two things: the use of the names of the L'Oréal brands in comparison tables issued by the Defendants, and the packaging and names used for five items in the Defendants' ranges. The issue of comparative reference is not relevant to the present case.
- As regards the issue of packaging, which is more relevant to the present case, Jacob LJ considered unfair advantage in a passage of which I will quote paragraphs 87 to 92:
"87. This is the real legal point under Art 5(2). There can be little doubt that the link between the defendants' packaging and the registered marks, if established, confers an advantage on the defendants. They are able to charge more (true, nothing like the price of a fine fragrance) for the Creation Lamis range than for a range whose packaging owes nothing to that of the "original," for instance the Stitch packaging. No doubt part of the higher price is attributable to the better quality of the packaging as such, but part of the higher price must be attributable to the "wink." The Judge so held at  (iii).
88. So is the advantage taken "unfair"? That depends on what is meant by "unfair advantage". The Judge applied the test used by the First Board of Appeal of OHIM in Case R 308/2003-1 Mango Sport v Diknak  ETMR 5 at . [He then set out this paragraph, which I have quoted at paragraph  above].
89. The test was propounded in very different circumstances from the present case. The marks were the same, and highly distinctive ("strong") for the goods of each side (clothing vs protective helmets). As a factual matter one can perhaps understand how there might even be confusion of consumers or at least a question in their minds as to whether there was some sort of connection between Mango helmets and Mango clothing. Here we have different marks and signs. And no question of even a speculation about a connection.
90. In essence the Mango test is "free riding" and no more. It does not matter whether the consumer is confused. Nor does it matter that the essential function of the trade mark is not impaired. Nor does it matter that there is no tarnishing or blurring of the trade mark or its reputation. It does not matter that the trade mark owner's sales are not impaired. It does not even matter that the trade mark owner is not deprived of any of the reward for promotion, maintenance or enhancement of his trade mark.
91. I am not convinced that this is necessarily correct. It amounts to saying "If there is an advantage, it must also be unfair". It gives no meaning whatever to the important word "unfair". If it is indeed virtually meaningless, that needs to be established at ECJ level. So I would ask a question about "unfair advantage" based on the above assumed facts. The question I would ask is:
5. Where a trader uses a sign which is similar to a registered trade mark which has a reputation, and that sign is not confusingly similar to the trade mark, in such a way that:
(a) the essential function of the registered trade mark of providing a guarantee of origin is not impaired or put at risk;
(b) there is no tarnishing or blurring of the registered trade mark or its reputation or any risk of either of these;
(c) the trade mark owner's sales are not impaired; and
(d) the trade mark owner is not deprived of any of the reward for promotion, maintenance or enhancement of his trade mark;
(e) but the trader gets a commercial advantage from the use of his sign by reason of its similarity to the registered mark
does that use amount to the taking of "an unfair advantage" of the reputation of the registered mark within the meaning of Art.5(2) of the Trade Mark Directive?
92. Mr Carr [Counsel for L'Oréal] submits that in many other EU countries those circumstances are regarded as unfair competition. He is probably right about some EU countries, though my general understanding (I could not give chapter and verse) is that in some countries there has been a "rowing back" on what amounts to "unfair competition". But even if such circumstances amount to unfair competition in some countries, it is surely clear that the concept of "unfair advantage" is an autonomous EU concept. It needs to be clarified, and I hope, a fairly bright-line rule established so that traders know what they can and cannot do."
- This court referred questions to the ECJ on both comparative use of the mark and unfair advantage. By the time the appeal was argued the Advocate General's opinion had been given, and we heard submissions about it. Since then the Court's judgment has been delivered. We received written submissions from both sides about that.
- The facts of L'Oréal v Bellure are very far away from those of the present case. Sub-paragraph (e) of question (5) assumed that the third party does obtain a commercial advantage from the use of a sign similar to the mark, which was an established fact in that case, but is not made out in the present case. But for the fact that this judgment would not, at the earliest, have been delivered until shortly before the announced date for that of the ECJ, we would not have waited to see what was said in that judgment. However, we do now have the benefit of that, and can see what was said about unfair advantage. In these circumstances I need not spend time on the opinion of the Advocate General, since the points which might be important are all made in the judgment of the Court. The Court introduced another paraphrase for unfair advantage, namely the user of the sign "riding on the coat-tails of the mark"; this does not seem to mean anything different from free-riding.
- The Court's answer to referred question (5) was as follows (the second sentence is the more important for present purposes):
"Article 5(2) of [the Trade Marks Directive] must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
- In the course of its judgment, the Court came to unfair advantage at paragraph 41:
"As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation."
- Unfair advantage can be found even if there is no element of confusion nor any detriment "either to the distinctive character or to the repute of the mark or, more generally, to its proprietor" (paragraph 43). Thus, unfair advantage can arise where the Defendant has obtained a benefit without the Claimant having suffered any loss. At paragraph 44 the Court reiterated points made in Intel, including the need for a global assessment, and the relevance of the strength of the mark and of the link:
"It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them."
- The crucial passage in the judgment on unfair advantage, leading up to the conclusion at paragraph 50 which is in the terms set out in the Court's ruling, quoted at paragraph  above, is paragraphs 47 to 49, as follows:
"47. In that regard, the referring court has held that there is a link between certain packaging used by Malaika and Starion, on the one hand, and certain marks relating to packaging and bottles belonging to L'Oréal and others, on the other. In addition, it is apparent from the order for reference that that link confers a commercial advantage on the defendants in the main proceedings. It is also apparent from the order for reference that the similarity between those marks and the products marketed by Malaika and Starion was created intentionally in order to create an association in the mind of the public between fine fragrances and their imitations, with the aim of facilitating the marketing of those imitations.
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark."
- Thus, the issue raised by Jacob LJ at paragraph 91 of his judgment in L'Oréal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party.
- Mr Mellor submitted that the element of intention would be relevant if it were proved, but that it is not necessary in order to show unfair advantage. He made a legitimate point that the Court's comment at the end of paragraph 41 of the judgment appears to be illustrative rather than definitive. He contended that the effect of the Court's decision, stripped of inessentials, is that, in a case where the third party, using a sign which is sufficiently similar to a mark with a reputation for a link to be established, obtains any commercial boost or other advantage from the link, then that advantage is of itself unfair, without proof of any additional factor. That reading would deprive the word "unfair" of any added meaning in the article.
- I cannot accept Mr Mellor's submission, for at least two reasons. First, bearing in mind the terms in which Jacob LJ explained why he posed question (5), in paragraph 91 of his judgment in L'Oréal v Bellure, inviting the Court to say, if they thought it, that the word "unfair" is virtually meaningless (see paragraph  above), I find it difficult to suppose that the Court would not have risen to his invitation (or challenge) and said so in terms, if they did mean to hold that any advantage was an unfair advantage.
- Secondly, considering the terms in which they did answer question (5), if they had meant to convey that "unfair" adds nothing, so that any advantage is an unfair advantage, they need not, and in my judgment would not, have said what they did. The second sentence of paragraph 50 of the judgment is far more specific and detailed than would have been necessary if that was their meaning.
- I will discuss this judgment further when I come later to consider Whirlpool's claim on the basis of unfair advantage.
- Mr Mellor, for Whirlpool, contended that the judge made two errors of law, which I have already mentioned, and that but for those, on the findings he made, he would have decided in favour of Whirlpool. Mr Purvis denied that the judge made either of the suggested errors, and also that he made findings such as Mr Mellor sought to rely on and said, in any event, that the facts do not justify a finding in Whirlpool's favour. In turn he argued, if necessary, that the judge should not have found a link sufficient to bring article 9(1)(c) into play.
Was the judge's reference to article 7(1)(e) a misdirection?
- Article 7(1)(e) of the CTMR prohibits the registration as a CTM of a sign or signs which consist exclusively of, in particular, the shape of goods which results from the nature of the goods themselves and the shape of goods which is necessary to obtain a technical result. The policy behind that provision is clear enough: a manufacturer cannot monopolise the market for a particular kind of product by registering a trade mark consisting of the shape of the product where that is the shape which the product has to have because of its very nature, or in order to work. This is an absolute ban on registration, which cannot even be overcome by acquired distinctiveness. The article did not apply to the registration of Whirlpool's CTM because it does not consist exclusively of a shape: it includes the word KitchenAid.
- The judge did not make the elementary mistake of applying article 7(1)(e) to the present case. What he said in paragraph 78 was that the policy underlying that article was relevant to the assessment of whether there is a sufficient similarity between the mark and the sign, both being shapes, for article 9(1)(c) to be satisfied. Given that the ECJ has taught us that an assessment of similarity must be carried out on a global basis, by reference among other things to the degree of similarity between the mark and the sign (see Intel paragraphs 42 and 68), it seems to me that the nature of mark and sign and the nature of the similarity must also be relevant. It is therefore not a misdirection in itself to observe that the mark and the sign respectively consist, for this purpose (i.e. ignoring the word marks visible on each product), of the shape of the product itself, and that while the KitchenAid Artisan has a shape which has to some extent become distinctive, it does not involve any fanciful or capricious element as a distinguishing feature.
- Apart from having sounded a warning note, it is not clear what function or effect the judge's observations in paragraph 78 had on his actual decision. Mr Mellor submitted, first, that it must be assumed to have had some effect, since otherwise there would have been no point in making the observation, and secondly that it could be seen that the judge had been influenced, because of his reference to "the realm of product shapes" in paragraph 80(3) in sentence (m). As to the first of those points, the judge said a number of things which are not strictly necessary to his decision, for example in his comments about the registration of the CTM, at paragraphs 21 and 22. As for the second point, this is related to the second error which Mr Mellor said the judge had made, to which I will therefore turn.
Did the judge apply a different test for infringement in respect of product shapes?
- The sentence (m) in paragraph 80(3) shows, Mr Mellor argued, that the judge applied the tests relevant to infringement under article 9(1)(c) in a more narrow or restricted manner than he would otherwise have done because the subject of the mark and of the allegedly infringing sign was, in substance, a product shape. If he did so, that would have been an error of law.
- It can be said that the judge did not express fully his analysis or reasoning in paragraph 80. He started from the point that the two shapes have enough in common for the one to remind relevant average consumers of the other, while not causing even initial, let alone lasting, confusion as to trade origin. He accepted that this is sufficient in law to amount to the necessary link. He then asked whether the link caused detriment or led to unfair advantage being taken of the mark's distinctive character or repute, and said that it did not (sentence (e): "I cannot see that it is.") At (g) (read as I have explained it above, at paragraph ) he said that the arrival on the market of the kMix did erode the market share of the KitchenAid Artisan, but that this did not impinge on any aspect of the property appertaining to the CTM, by which he must have intended to refer to the distinctive character and the reputation of the mark, since those are what give the mark its value as an economic asset. Later, at sentence (k), he said in terms that the similarity between the bodywork of the kMix and that represented by the mark is not sufficient to impinge on (or, in other words, to affect in any way) the distinctiveness of the mark. In sentence (m) he went on to refer not only to the concepts labelled "blurring" and "dilution", which are colloquial ways of referring to detriment to the distinctive character of a mark, but also to "tarnishing", which refers to detriment to the repute of the mark, such as by association with another product which would be incongruous or damaging, as in the Claeryn/Klarein case, a decision of the Benelux Court of Justice. (That case concerned the identically pronounced marks "Claeryn" for a Dutch gin and "Klarein" for a liquid detergent. Since it was found that the similarity between the two marks might cause consumers to think of detergent when drinking "Claeryn" gin, the "Klarein" mark was held to infringe the "Claeryn" mark.) He also referred to "free-riding", which as we have seen is used as shorthand for taking unfair advantage of the mark. He had already said that none of these was made out, in his sentence (e).
- Mr Mellor submitted that the judge's sentence (m) is to be read as if, set out more fully, it said: "In the realm of product shapes it would be wrong to apply the concepts … as generally as they would be applied as regards another kind of mark; because they are to be applied less generally than they otherwise would be, the similarity between the bodywork of the two appliances is not such as to satisfy any aspect of the specific condition under article 9(1)(c)."
- I do not accept Mr Mellor's analysis of the judge's words. It seems to me that "more generally" means, in effect, "so generally as to find that the similarity does satisfy the specific condition under article 9(1)(c)". He meant that the relevant concepts cannot properly be applied so generally as to find that the shape of the kMix is so close to that of the CTM as to offend against the article. In my judgment the judge did not go wrong in law because he did not apply a different test for shapes from that which he would have applied in relation to a different kind of mark. Mr Mellor's argument obtains such force as it might have from the inclusion in the sentence of the phrase "in the realm of product shapes". However, it does not seem to me that this can legitimately be read as setting up an implied contrast with what would have been the position "in the realm of" some other type of trade mark or sign. It does no more than refer to the fact that the kind of mark or sign with which the case is concerned is that of product shapes. The phrase may not be strictly necessary to the sentence, but I do not accept that it reveals or amounts to a misdirection in law.
- Let me suppose, however, in the alternative, that the judge did apply a different test because the mark and the sign are both product shapes, being influenced by what he had said at paragraph 78. He should not have done so, but what is the consequence if he did? On the findings of fact he made, would he have come to a different conclusion if he had applied the correct test, namely the same as if it had been, for example, a word mark? He had accepted Mr Mellor's case as to there being a sufficient link between Whirlpool's mark and Kenwood's sign. Mr Mellor sought to show that the link led, or was likely to lead, to a change in the economic behaviour of the relevant average consumer (see paragraph 77 of the judgment in Intel). It seems to me that, on the basis of the judge's review of the evidence, which I have already considered at some length, my conclusion being expressed at paragraph  above, the judge would not, in any event, have held that Mr Mellor's contention was made out. On that evidence, and on his conclusion as to its effect, I see no reason to suppose that he would have come to a different result on any of the several different ways of putting the claim under article 9(1)(c). Accordingly, even if I am wrong and the judge did misdirect himself as to the test to be applied when considering a mark and a sign each consisting of product shapes, the facts as found by the judge on the basis of the evidence do not lead to a different conclusion.
Detriment to the distinctive character of the CTM
- I return to the sentence at paragraph 80(2)(g). The proposition that something is apt to erode Whirlpool's market share without impinging on the rights associated with its trade mark is not in itself a difficult proposition. Especially where one product has had a particular sector of the market to itself, the introduction of another by a rival undertaking is itself likely to affect the market share of the first, which had been a monopoly. That can happen by fair and lawful competition, without anything being done which might infringe the trade mark rights of the first undertaking. In sentence (f) the judge had just said that the marketing of the kMix did not touch or otherwise affect the distinctive character or the repute of the KitchenAid Artisan mark. Mr Mellor's submission is that in the very next sentence he said something which amounted to a contradiction of the previous sentence. That seems to me unlikely.
- I find further support for this in what the judge had said previously. A liking for the design of the KitchenAid Artisan is a major factor in the appeal of the product (paragraph 32). Comments on the kMix from survey respondents looking at the flashcards were given primarily on the aesthetic and functional aspects of the appliance without regarding its shape or appearance as an indication of trade origin (paragraph 51). I have already quoted what he said at paragraph 68 about distinctiveness, and at paragraph 71 about similarity and the link. In paragraph 71 he mentioned in particular that consumers in this market would be alive to the potential for variations in appearance to be indicative of differences in trade origin, and said that no-one actually contemplating the purchase of either appliance would be under any misapprehension as to their true trade origin. The judge there clearly discounted any reliance on the reported customer at Fenwicks in Brent Cross as having been at any real risk of having bought a kMix while thinking it was a KitchenAid Artisan. At paragraph 75 he rejected the possibility of initial confusion, and held that relevant average consumers would be aware, looking at each product, that it was different from the other of which it reminded them, and would not be under the misapprehension that each was of the same trade origin. That disposed of the claim based on article 9(1)(b). It seems to me that it also disposed of any claim under article 9(1)(c) based on detriment to the distinctiveness of the mark, because the judge has held that the CTM shape remains as distinctive as it was before. He said so in terms in paragraph 80(2) at sentence (f).
- Whirlpool did not put forward a case based on damage to the repute of the CTM, the other possible "detriment" case under article 9(1)(c).
Unfair advantage of the distinctiveness or repute of the CTM
- On the footing that the relevant average consumer is aware of the difference of appearance between the two products, and does not confuse the one with the other, in terms of trade origin or otherwise, what is the case as to Kenwood taking unfair advantage of the reputation or the distinctive character of the CTM?
- Mr Mellor submitted that the similarity between the shape of the kMix and that of the CTM, giving rise to the link which the judge held to exist, had an economic impact on Whirlpool's trade. He also argued that Kenwood gained a competitive advantage by reason of the similarity, and that this by itself demonstrated that Kenwood secured an unfair advantage from the distinctive character and the repute of the CTM. Relying on the reference in paragraph 36 of the ECJ's judgment in Intel, he submitted that the evidence of the expert witness for Kenwood, Mrs Watson, showed that Kenwood drew a relevant benefit from the similarity and the association in the minds of relevant average consumers. With the benefit of the opinion of Advocate General Mengozzi in L'Oréal v Bellure, in addition to that of Advocate General Sharpston in Intel, and now the judgment of the Court in L'Oréal v Bellure he contended that the similarity and the association gave a boost to Kenwood's sales of the kMix, and that the shape of the kMix has a particular attraction to consumers due to its association with the positive qualities of the well-known shape of the KitchenAid, in such a way as to induce the consumer to buy the kMix product because of the similarity of its shape to the CTM. In part these submissions are based on a reading of paragraph 80 which I do not accept, for reasons already given. I need not go into that aspect of the evidence again.
- I do need to make some reference to Mrs Watson's evidence, because of the reliance placed on it by Mr Mellor in the context of unfair advantage. The judge mentioned a number of points from her evidence at paragraph 67. One, relied on by Whirlpool, is that having a similar "look appeal" potentially attracts customers who would not have looked at the Kenwood Chef. In the context of the particular series of questions and answers, I do not regard that as referring to anything other than that both products are designed to a high standard, and both thereby attract a type of customer who would not be attracted by a less stylish product such as the Kenwood Chef. The same goes for her comment that there is a competitive advantage in being an iconic brand when selling to consumers. That proposition is obvious in itself, and does not take the case any further on its own. Mrs Watson thought that there might be initial confusion between the two products, which would be dispelled on closer examination, but of course the judge held that there would not even be initial confusion, so this aspect of Mrs Watson's evidence (not within the ambit of her expertise) is of no help to Whirlpool. Mr Mellor also pointed to a passage in her evidence in which she accepted that, if a customer were to be looking at a kMix because of its similarity to the KitchenAid Artisan, that would be a competitive advantage. Mrs Watson was answering Mr Mellor's question on the basis of an assumed hypothesis, and was not asserting or accepting that a customer would look at a kMix because of its similarity to the KitchenAid Artisan. It seems to me that that answer proves nothing. To the extent that the evidence of the survey witnesses touched on this point, I have reviewed it earlier, and I conclude, for reasons there given (paragraph ), that it does not make out any case of any similarity or reminder having an effect on the economic behaviour of relevant average consumers.
- In his written submissions made in the light of the ECJ's decision in L'Oréal v Bellure, Mr Mellor made further points. First, he put forward a criticism of the judge's comment in sentence (o) in paragraph 80, that resemblance can have the effect of drawing consumers towards choosing the kMix without being objectionable from a trade mark point of view. Since, however, my conclusion is that the judge did not find that consumers would be so drawn (see paragraph  above), I need not spend time on that new point.
- His next line of attack was to draw an analogy with the evidence of intention which was present, and plain, in that case, to which the Court clearly attached considerable importance, on the one hand, and the evidence as to Kenwood's intentions in the present case on the other hand. The second sentence of paragraph 47 and paragraphs 48 and 49 of the Court's judgment all mention as significant the third party's intentions: the intentional creation of an association in the mind of the public between its product and that of the trade mark holder; the intention to take advantage for promotional purposes of the distinctive character and the repute of the marks; the attempt through the use of a sign similar to the mark in order to benefit from the mark's power of attraction, its reputation and its prestige. A somewhat similar point is made in paragraph 41 (though there without express reference to subjective intention) with the reference to "a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign".
- The material in the present case which is said to bring it within that reasoning is that summarised by the judge at paragraph 7 of his judgment, to which I have referred at paragraph  above.
- It seems to me that this case is a very long way away from L'Oréal v Bellure. As I have mentioned at paragraph  above, Whirlpool did not make any relevant allegation of intention in their pleaded case. Kenwood could not have planned its entry into this sector of the market, of which KitchenAid had until then had a monopoly, without being very well aware at all times of the KitchenAid Artisan. That in itself is not sinister (as the judge said), nor does it amount to anything like what the alleged infringers did in L'Oréal v Bellure. Kenwood, after all, had its own established goodwill in small domestic appliances, and kitchen items especially, on which it sought to build and rely, although not in the particular niche of the market to which the KitchenAid Artisan appealed. It did not need to ride on KitchenAid's coat-tails, so as to save itself from making promotional efforts in relation to its new product. It wished and aimed to use and to develop its own established goodwill and reputation by way of the promotion of its new product. As Mr Purvis submitted, Kenwood would not have wanted to be thought to have produced a "me too" design. Nor can I regard the colour similarity as sufficient to bring the case within the approach explained by the Court in its recent decision, especially as the CTM is not colour-specific, and in the absence of any pleaded allegation on this point.
- I do not consider that Kenwood's design involves anything like a transfer of the image of the KitchenAid mark, or of the characteristics which it projects, to the goods identified by Kenwood's sign (see L'Oréal v Bellure paragraph 41). Of course, as a newcomer in a specialist market of which KitchenAid had a monopoly, and being (necessarily) in the basic C-shape of a stand mixer, the kMix would remind relevant average consumers, who are design-aware, of the KitchenAid Artisan. That, however, is a very different phenomenon, in very different commercial circumstances, from the situation considered in L'Oréal v Bellure. I find the Court's judgment instructive, but it does not seem to me to lead to the conclusion in favour of Whirlpool for which Mr Mellor contends. On the contrary, having rejected his radical submission that the word "unfair" could just as well have been left out of the article, it seems to me that the decision points away from, rather than towards, liability under the article on the facts of the present case. It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oréal v Bellure. No additional factor has been identified in this case other than intention.
- The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in paragraph 79 of the Court's judgment. As Advocate General Sharpston said at paragraph 65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. The Board of Appeal in Mango also said that unfair advantage is the more likely where there is greater similarity of goods as well as where the mark is more distinctive, but that was a case where the mark was identical, and strongly distinctive, and the goods were not the same but they were in an associated or overlapping field. The Court in L'Oréal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel. Here, although the relevant goods are very similar (even identical if one is considering the category stand mixers), the mark is distinctive, but not strongly so, nor is the reminder strong. That is therefore another pointer away from unfair advantage. At paragraph 66 of her Opinion in Intel Advocate General Sharpston referred to the question whether the association of the earlier mark would enhance the performance of the later sign in the use made of it. That is another way of putting the proposition that the alleged infringer must draw some advantage from the use of a similar mark or sign. In L'Oréal v Bellure the third party's advantage had been established; here it is very much in issue.
- It seems to me that, on the evidence and on the judge's findings as regards that evidence, Whirlpool is unable to show that Kenwood has in fact drawn, or is likely to draw, any commercial advantage from the perceived similarity. None of Mrs Watson, the survey witnesses, or the demonstrators enables Whirlpool to show clearly that Kenwood had obtained any such advantage, or were likely to do so. Relevant average consumers would be aware both of the KitchenAid Artisan and of the new entrant to the market. The two are similar in certain respects, but above all because both are stand mixers designed to a high standard of style, so as to be attractive products on the kitchen work surface, rather than functional items to be hidden away when not in use. Accordingly, looking at the question of unfair advantage generally, it seems to me that the judge was right to reject the case made on that footing for two reasons: there was no advantage to Kenwood, and if, to the contrary, there were, it was not an unfair advantage.
- It follows that the alternative case under article 9(1)(c) based on unfair advantage is not made out, any more than is the case based on detriment to the distinctive character of the CTM.
- For those reasons it seems to me that Whirlpool's appeal fails.
- In those circumstances I need not consider the issues arising on the Respondent's Notice.
- We had some submissions as to whether a reference to the ECJ might be necessary in this case, but it seems to me that the case depends on the findings of fact and on the correct understanding of what the judge said, not on any debatable or doubtful proposition of trade mark law under the CTMR.
- For those reasons and in those circumstances, I would dismiss the appeal.
Lord Justice Wilson
- I agree.
Lord Justice Rix
- I also agree.
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