![]() |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] [DONATE] | |||||||||
England and Wales High Court (Chancery Division) Decisions |
||||||||||
|
THE FUTURE OF BAILII DEPENDS ON USERS LIKE YOU
If you want to be able to use BAILII in the future, please consider making a donation to celebrate BAILII's 25 years of providing free access to law.
Your donation, no matter the size, will help BAILII maintain the legal databases that you and many other users rely on. If every visitor this month gives just £5, it will have a significant impact on BAILII's ability to continue providing this vital service.
| ||||||||||
|
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd & Anor [2016] EWHC 52 (Ch) (20 January 2016) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2016/52.html Cite as: [2016] ETMR 18, [2016] EWHC 52 (Ch) |
||||||||||
[New search]
[Context
]
[View without highlighting]
[Printable PDF version]
[Help]
CHANCERY DIVISION
Fetter Lane, London EC4A 1NLL |
||
B e f o r e :
____________________
THE LONDON TAXI CORPORATION LIMITEDtrading as THE LONDON TAXI COMPANY |
Claimant |
|
| - and - |
||
| (1) FRAZER-NASH RESEARCH LIMITED (2) ECOTIVE LIMITED |
Defendants |
____________________
Mark Platts-Mills QC and Philip Roberts (instructed by Berwin Leighton Paisner LLP) for the Defendants
Hearing dates: 17-20, 23 November 2015
____________________
Crown Copyright ©
MR JUSTICE ARNOLD :
Contents
| Topic | Paragraphs |
| Introduction | 1-5 |
| The Fairway, TX1, TXII and TX4 | 6-9 |
| The Trade Marks | 10-12 |
| The new Metrocab | 13-14 |
| The witnesses | 15-26 |
| LTC's witnesses | 15-21 |
| The Defendants' witnesses | 22-26 |
| General factual background | 27-75 |
| Terminology | 28-30 |
A brief history of London taxis![]() |
31-57 |
Factors affecting drivers' choices of taxi models |
58-59 |
Legal and regulatory requirements for London taxis![]() |
60-64 |
The attitude of the PCO, TfL and Mayor of London to the design of London taxis![]() |
65-68 |
The Mayor of London 's Air Quality Strategy |
69-71 |
| Private hire vehicles | 72-75 |
| LTC's conventional trade marks | 76-77 |
| Reception of the Vito by drivers and passengers | 78-81 |
| The design of the new Metrocab | 82-140 |
| Promotion of the new Metrocab | 141-143 |
| Trial of the new Metrocab | 144-145 |
| Production of the new Metrocab | 146 |
| Do the Defendants intend to deceive the Public? | 147-148 |
| Potential collaboration between LTI and FNR in 2005 | 149 |
| The design of the TX5 | 150-154 |
| The incident involving Mr Zeghibe | 155 |
| Key legislative provisions | 156-158 |
| The average consumer | 159-163 |
| The law | 159 |
| The average consumer in the present case | 160-163 |
| Validity of the Trade Marks: distinctive character | 164-208 |
| Inherent distinctive character | 165-172 |
| The relevant date | 173 |
| Assessment: the CTM | 174 |
| Assessment: the UKTM | 175 |
| Acquired distinctive character | 176-195 |
| The law | 176-178 |
| The relevant date | 179 |
| Assessment | 180-181 |
| The market share held by goods bearing the mark | 182 |
| How intense, geographically widespread and longstanding the use of the mark has been | 183 |
| The amount invested by the proprietor in promoting the mark | 184-187 |
| Evidence from trade and professional associations | 188 |
| Opinion polls | 189 |
| The proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor | 190 |
| Overall | 191 |
LTC's case with respect to consumers of taxi services |
192-194 |
| Conclusion | 195 |
| Validity of the Trade Marks: substantial value | 196-215 |
| The law | 197-209 |
| The relevant date | 210 |
| Assessment | 211 |
| The UKTM | 212-214 |
| The CTM | 215 |
| Revocation of the CTM | 216-239 |
| Use of the CTM itself | 217 |
| The law with respect to genuine use | 217-219 |
| The law with respect to sales of used (i.e second-hand) goods | 220-226 |
| The law with respect to genuine use in the Community | 227-230 |
| LTC's evidence of use | 231 |
| Assessment | 232-234 |
| Use of the CTM in a form differing in elements which do not alter its distinctive character | 236 |
| The law | 236 |
| Assessment | 237-238 |
| Conclusion | 239 |
| Conversion of the CTM | 240 |
| Relevant date for assessment of the issues on infringement | 241 |
| of the Trade Marks | |
| Approach to the issues on infringement | 242 |
| Infringement of the Trade Marks under Article 9(1)(b)/ Article 5(1)(b) | 243-262 |
| The law | 243-245 |
| Assessment | 246 |
| The average consumer | 247-248 |
| The distinctive character of the Trade Marks | 249 |
| Comparison of goods | 250 |
| Comparison of signs | 251-259 |
| Has there been actual confusion? | 260-261 |
| Overall assessment | 262 |
| Infringement of the Trade Marks under Article 9(1)(c)/Article 5(2) | 263-269 |
| The law | 263 |
| Assessment | 264 |
| Reputation of the Trade Marks | 264 |
| Link | 265 |
| Detriment to the distinctive character of the Trade Marks | 266 |
| Unfair advantage | 267 |
| Due cause | 228 |
| Conclusion | 269 |
| Defence under Article 12(b)/Article 6(1)(b) | 270-283 |
| Characteristics | 271 |
| Honest practices in industrial and commercial matters | 272-293 |
| Whether the defendant knew of the existence of the trade mark | 273 |
| Whether the defendant used the sign complained of in reliance on competent legal advice | 274 |
| The nature of the use complained of | 275 |
| Whether the defendant knew that the trade mark owner objected to the use of the sign complained of | 276 |
| Whether the defendant knew, or should have appreciated, that there was a likelihood of confusion | 277 |
| Whether there has been actual confusion, and if so whether the defendant knew this | 278 |
| Whether the trade mark has a reputation, and if so whether the defendant knew this | 279 |
| Whether the defendant's use of the sign complained of interferes with the owner's ability to exploit the trade mark | 280 |
| Whether the defendant has a sufficient justification for using the sign complained of | 281 |
| The timing of the complaint from the trade mark owner | 282 |
| Conclusion | 283 |
| Passing off | 284-298 |
| The law | 284-303 |
| Assessment | 291-298 |
| Goodwill | 292-295 |
| Misrepresentation | 296 |
| Damage | 297 |
| Conclusion | 298 |
| Summary of principal conclusions | 299 |
Introduction
London taxi
. The Defendants are the successors in title to the manufacturer of the Beardmore, Oxford and Metrocab models of
London taxi
. LTC owns trade mark registrations for the shapes of the Fairway and of the TX1/TXII respectively ("the Trade Marks") and claims goodwill in the shapes of all four models. It alleges that the Defendants threaten to infringe the Trade Marks and to commit passing off by marketing a new model of
London taxi
referred to as the new Metrocab which is currently being trialled. (Strictly speaking, it is the Second Defendant ("Ecotive") which threatens to do this, while the First Defendant ("FNR") will supply parts for the new Metrocab, and in particular the powertrain; but nothing turns on this.)
taxi
, which it contends has been substantially copied from the shape of the TX4, yet it advances no claim for infringement of any registered design, design right or copyright. Furthermore, LTC alleges that the Defendants intend to deceive the public as to the origin of the new Metrocab by adopting a shape which closely resembles that of LTC's models, which is an allegation of fraud. Unsurprisingly, these allegations have increased the temperature, as well as the duration and expense, of the dispute.
The Fairway, TX1, TXII and TX4
The Trade Marks
taxis
" in Class 12 ("the UKTM"). The UKTM is a three-dimensional trade mark represented as follows:
.jpg)
.jpg)
.jpg)
The new Metrocab
.gif)
.jpg)
.jpg)
The witnesses
LTC's witnesses
i) Peter Johansen is the Chief Executive Officer of LTC, but has only been involved in the business since 2012. He was LTC's principal witness in support of the claim to goodwill in the shape of the LTC
taxis
, which he did primarily by exhibiting a wide range of documentary evidence. He also gave evidence as to the use of the CTM based on LTC's records.
ii) Paul Woolley is the Chief Operations Officer of LTC, having previously worked for LTI (as to which, see below) since 2001. He gave evidence about the design of the Fairway, TX1, TXII and TX4. He also gave evidence about a potential collaboration between LTI and FNR in 2005 and about the design process in the automotive industry.
iii) David Ancona is Design Director and General Manager of Geely Design Barcelona SLU ("Geely Barcelona"), which is part of the same group of companies as LTC. He has over 30 years' experience of automotive design. He gave evidence about the design of the TX5 (as to which, see below) and about the distinctiveness of the LTC cabs. He also commented on the Defendants' case of independent design of the new Metrocab (this evidence was evidence in the nature of expert evidence, although no permission for such evidence had been granted, but no objection to it was made on this ground).
iv) Nigel Walters is the Export Logistics Manager of LTC, having been employed by LTI since 2000. He gave evidence about the promotion of the TX1, TXII and TX4 at European trade fairs. He was not required to attend for cross-examination.
v) Andrew Overton is the grandson of Tom Overton, who founded Mann and Overton (as to which, see below) with John Mann in 1899. Andrew Overton spent almost his entire career from 1970 to 2011 working successively for Mann and Overton, the LTI division of Manganese Bronze and LTI. He gave evidence about the history of Mann and Overton, Manganese Bronze and LTI during that period and about the design of the Fairway, TX1, TXII and TX4.
taxi
drivers: David Forster, Bryan Hodson, Kevin Jackson and Leonard Jenkins. They gave evidence about their experiences of driving various models of
London taxis
. Mr Hodson was not available until after the evidence had been completed, and so his evidence was admitted as hearsay evidence.
Taxis
Ltd, which owns 54
taxis
that are rented out to self-employed drivers) and Eugene Parete (owner of Black
Taxi
Rental Ltd, which owns just over 160
taxis
that again are rented out). They gave evidence about their experiences of the various models.
taxi
drivers and cab fleet owners had been found and selected to give evidence. In my judgment this is a valid criticism, but having regard to the evidence as a whole I do not consider that it would be appropriate to discount the evidence of these witnesses.
The Defendants' witnesses
i) Kamal Siddiqi is the Chairman of both FNR and Ecotive as well as other companies within the Frazer-Nash group. Mr Siddiqi is the sole owner of Kamkorp Ltd, which wholly owns FNR, and the majority shareholder in Ecotive. He gave evidence about the history of Metrocab and about the development of the new Metrocab.
ii) William Chia is employed by FNR as Group Director of Operations for the Frazer-Nash group, a role he has held since 2001. He gave evidence about the history of the
London taxi
(largely derived from a wide range of documents he exhibited) and the current state of the market. He also gave evidence about the development of the new Metrocab and evidence in support of various other aspects of the Defendants' case.
taxi
drivers, namely John Butler and Preston Morris. They gave evidence about their experiences of driving various models of
London taxis
, and in particular the new Metrocab. In addition, Mr Butler gave evidence about his encounter with Mr Zeghibe.
General factual background
Terminology
taxi
is a "hackney carriage", also known as a "hackney cab". The term derives from "hackney coach", which in turn derives from "hackney", which meant a horse of medium size and quality, used for ordinary riding and frequently kept for hire. The word
taxi
is a shortened version of "
taxi
-cab", which appears to be falling into disuse, and derives from "taximeter". The word "cab" derives from "cabriolet", which originally described the construction of the Hansom cab. "Cab" is frequently used as a synonym for "
taxi
".
London
hackney carriages have to be licensed. Thus a
London taxi
may be more fully described as licensed
London
hackney carriage. More familiarly, they are often referred to as "black cabs", although nowadays only about 85-90% of
London taxis
are black.
London taxis
, i.e. licensed
London
hackney carriages, and private hire vehicles, also known as "minicabs". I shall return to this distinction below.
A brief history of
London taxis
London taxi
date back as far as 1621, when the first documented hackney coach operated in
London
. Regulation began with a proclamation issued by Charles I in 1636, which was followed by an Ordinance for the Regulation of Hackney-Coachmen in
London
approved by Parliament in 1654. In the nineteenth century, there were two main kinds of hackney carriage, the four-wheel, two-horse growler and the two-wheel one-horse Hansom cab (patented in 1834).
London
Electrical Cab Co Ltd launched an electric cab which was nicknamed the Bersey after its designer. The Bersey did not prosper, and the cabs were removed from service in 1899. In May 1905 the
London
Motor Cab Co launched the first petrol-engine powered cab, known as the Rational. This was followed by a number of other models.
London taxis
would be able to manoeuvre more easily within the capital's often narrow streets, but was a significant inhibiting factor as to the types of vehicles which could enter the market. As a result of this and other requirements in the Conditions of Fitness, most models of vehicle which have been licensed for use as
London taxis
since then have been specially designed for the purpose rather than ordinary cars.
taxi
service using Renault vehicles. By the end of the year there were 500 Renaults out of 723 motor cabs. By the end of 1908 there were 2,805 cabs of 18 different makes, many of them French. In 1909 W & G Du Cros Ltd launched a
taxi
service using British Napier vehicles, over 1,500 of which were subsequently produced. In 1910 Mann and Overton Ltd introduced a new French Unic model which had been specially commissioned and designed to meet the Conditions of Fitness. By the outbreak of World War I, there were nearly 8,000 motor cabs and just 231 Hansom cabs.
taxi
, followed by the Oxford Series II in 1950 and the Oxford Series III in 1951. From 1949 the Oxford was sold by Beardmore. In 1952 Morris merged with Austin to form British Motor Corp Ltd. By 1953 1,925 Oxfords had been produced. The Oxford is shown below:
.jpg)
London taxi
market. In 1952 Birch Brothers Ltd started converting FX3 cabs to a diesel engine, which prompted Austin to introduce a diesel-engined version in 1954. Subsequently a four-door version called the FL1 was introduced, when the requirement for an open luggage platform was dropped by the PCO. The FX3 is shown below:
.jpg)
London taxis
came to be black until the advent of coloured
taxis
and
taxis
painted with advertising in the 1980s.
.jpg)
.jpg)
.jpg)
London
General Cab Co, but this model was never put into production.
London taxi
market. Manganese Bronze Holdings Ltd acquired Carbodies in 1973, and Lloyds & Scottish Ltd acquired Mann and Overton in 1977. In 1982 Carbodies acquired all Austin's intellectual property rights in the FX4 and in 1984 Manganese Bronze acquired Mann and Overton. In 1985 Manganese Bronze formed a
London Taxi
International division, which became known as LTI, to operate the combined business of Mann and Overton and Carbodies. This division was subsequently incorporated as LTI Ltd.
.jpg)
.jpg)
taxi
called the Peugeot E7 that had not been licensed for use in
London
, launched a judicial review against Transport for
London
("TfL") challenging the PCO's decision to maintain three aspects of the Conditions of Fitness, including the turning circle. The judicial review was settled on the basis that the PCO would reconsider the three aspects in the light of submissions from interested parties and expert evidence, but the upshot of the exercise was that all three conditions were maintained. As a result, the Peugeot E7 has not been licensed for use in
London
.
taxi
. This is a converted Vito van (or, if one prefers to look at it that way, a converted Viano multi-purpose vehicle or MPV) with rear-wheel steering at low speeds to achieve the required turning circle. In Spring 2011 Mercedes introduced a revised version which complied with the Euro 5 emissions standard. The 2011 Vito is shown below:
.jpg)
London
version of its NV200
taxi
with a petrol engine. This failed to gain approval, however, and in January 2014 Nissan unveiled a re-designed front which according to media reports was intended to make the vehicle more recognisable to the public as a
taxi
(or, in the words of one author, "instantly recognisable as one of the capital's iconic black cabs"). The new front included round headlamps and a new grille. The re-modelled NV200 is shown below:
.jpg)
London
's announcement of his plans for zero emissions capability by 2018 (as to which, see below). Nissan explained that this was because the petrol version would not meet the new standards.
Factors affecting drivers' choices of
taxi
models
taxi
to purchase (whether new or second-hand) or rent. Among these are the appearance of the vehicle, the cost of purchase or rent, the depreciation on the vehicle, the fuel and other running costs, the reliability of the vehicle, the number of passengers the vehicle will take, the ease of wheelchair access, the comfort afforded to the driver and the comfort afforded to the passengers. Although it is clear from the evidence, as discussed further below, that appearance is a significant factor, it is far from the sole consideration.
The licensed
London taxi
fleet from August 2008 to March 2015
London taxi
fleet from August 2008 to March 2015. In August 2008 there were 3,230 TX4s (14.9%), 6,345 TXIIs (29.2%), 6,118 TX1s (28.1%), 5,190 Fairways (23.9%), 845 Metrocabs (3.9%) and 19 Vitos, making a total of 21,747. In March 2015 there were 9,655 TX4s (42.9%), 6,221 TXIIs (27.6%), 3,828 TX1s (17.0%), 4 Fairways, 373 Metrocabs (1.7%) and 2,419 Vitos (10.8%), making a total of 22,500. The most dramatic change during this period occurred between September 2012 and October 2013, when the number of Fairways declined from 1,174 to 58. The decline in the number of Fairways was much sharper than the decline in the number of Metrocabs.
Legal and regulatory requirements for
London taxis
London Taxis
: A Full History (2nd edition, Earlswood Press, 2014) notes in his Introduction:
"No other city lays down such specific rules for itstaxis
as
London
, nor has controlled them so stringently for so long."
Taxis
and
taxi
drivers in
London
are regulated by a complex web of legislation and regulations, the key elements of which are: the
London
Hackney Carriages Acts of 1831, 1843, 1850 and 1853; the
London
Cab Order 1934 (as amended, in particular by the Greater
London
Authority Act 1999) made by the Secretary of State under the Metropolitan Public Carriage Act 1869; the
London
Cab and State Carriage Act 1907; and the Conditions of Fitness. As can be seen, although the legislation is periodically updated, it goes back a long time.
London
Authority ("GLA") and became part of TfL. In 2010 the PCO was re-named
London Taxi
and Private Hire ("LTPH").
taxis
and drivers must be licensed by TfL. In addition the scale of fares is fixed by TfL. Drivers must, among other things, be at least 21, must pass examinations as to their Knowledge of
London
and their ability to drive a
taxi
and must display a numbered badge issued by TfL.
Taxis
must meet current European emissions standards (presently Euro 5 or better); must meet the current Conditions of Fitness; must have a TfL-approved taximeter; must have a "
TAXI
" sign on the roof which is illuminated when the
taxi
is plying for hire; and (since 2012) must be not more than 15 years old unless by special exemption.
TAXI
" sign and a taximeter and the maximum age, the Conditions of Fitness 2007 (the version in evidence is Version 7.1 dated 1 January 2012) contain various other requirements, such as the maximum wheel turning circle of 7.62 metres, a body of fixed head type with partially glazed partition, a maximum overall length of 5 metres, wheelchair access and accommodation, occasional seats which rise automatically when not in use and a single-piece, full width rear window. They do not, however, prescribe the shape of the external bodywork.
The attitude of the PCO, TfL and Mayor of
London
to the design of
London taxis
London taxis
, there is no dispute that the PCO, TfL and the Mayor of
London
("the Mayor") have clear views on this subject which they do not hesitate to make known to manufacturers.
"… it became very clear to me that the PCO (and TfL) were keen for British traditions to be preserved with regard to the 'look' of any new licensedLondon
cab, where possible, together with the adoption of the latest environmentally-friendly enabling technologies."
"From my dealings with TfL and the PCO during development of the new Metrocab, including during the demonstrations of early range-extended electric prototypes, it seems clear to me that TfL ideally wants all licensedtaxis
in
London
to comply with a 'conformed look' and common aspects of appearance, at some level, in order to ensure they are recognisable as
taxis
licensed for hire in
London
."
The Mayor of
London
's Air Quality Strategy
London taxis
has the progressive tightening of European emissions standards over time. A further factor which has influenced both the Defendants' development of the new Metrocab and LTC's development of the TX5 is the increasingly stringent approach towards air quality being taken in recent years by the municipal authorities in
London
.
London
and the GLA published Clearing the air, which set out the Mayor's Air Quality Strategy for
London
. This stated in paragraph 3.10.7 that the Mayor believed that the
London taxi
trade should lead the world in moving towards a zero emission future, and that he would work with the trade and manufacturers with the aim of producing a
taxi
with a 60% improvement in fuel economy by 2015 and capable of zero tail pipe emission operation by 2020.
taxis
presented for licensing in
London
to be zero emission capable from 1 January 2018. These plans were announced at an event organised by TfL called "New
Taxis
for
London
", at which five manufacturers announced plans for
taxis
which would meet this requirement: LTC (a TX4 with a hydrogen fuel cell and the TX5), FNR (the new Metrocab), Mercedes (an electric Vito), Nissan (the electric NV200) and a company called Karsan.
Private hire vehicles
London
have been licensed by the PCO, and now LTPH, as well as
London taxis
(and their drivers). The essential distinction between a
London taxi
and a private hire vehicle is that a
taxi
may be hired from a rank or on the street, but a private hire vehicle must be pre-booked. This distinction has been somewhat eroded, however, since the advent of apps like Hailo and GetTaxi (which are primarily for
taxis
) and Uber (which is primarily for private hire vehicles).
TAXI
" signs on their roof or taximeters. Furthermore, ordinary production cars of almost any make and model can be used as private hire vehicles.
taxi
drivers. In particular, private hire drivers are not required to pass the Knowledge of
London
test.
London
are prepared to hire both
taxis
and private hire vehicle according to circumstances. There are some circumstances where only a
taxi
can be hired. Even where the passenger has a choice, however, many passengers prefer to hire a
taxi
, at least in some circumstances (for example, when returning home late at night). Although the private hire trade has improved considerably since it has been licensed, many passengers still consider that a
taxi
is safer and/or more reliable. Thus a survey by the
London
Assembly Transport Committee in August 2014 found (among other things) that "around one in three passengers chose
taxi
services because of their confidence that the driver knew the best route for their journey". Some passengers may also consider
taxis
to be quicker because they can use bus lanes, whereas private hire vehicles cannot.
LTC's conventional trade marks
taxis
, including the following:
![]() |
![]() |
FAIRWAY |
TX1 |
| UK TM 2492595 | UK TM 2143284 | UK TM 2143202 | UK TM 2143843 |
Reception of the Vito by drivers and passengers
taxis
have been sold to
taxi
drivers and licensed to ply for hire in
London
. As a result, they have become a common sight in
London
over the last seven years. Nevertheless, they are not as numerous as TX1s, let alone TXIIs or TX4s. This is partly simply a question of time. As explained above, the working life of a
London taxi
is 15 years. Thus it takes time for any new model to penetrate the market.
taxi
drivers consider that the appearance of the Vito counts against it. In some cases, this is purely a question of aesthetics: some drivers simply do not like the boxy, MPV-like appearance of the Vito. There is considerable evidence, however, that drivers find that some passengers react unfavourably to the Vito. This is manifested by passengers walking past Vitos at ranks and hailing LTC cabs rather than Vitos on the street. Again, in some cases this may be an aesthetic preference. In other cases, it may be due to a concern that the passenger may have to pay a premium rate because the Vito is larger than other
taxis
(although in fact this is not the case). It is clear, however, that some passengers either do not perceive the Vito as a proper licensed
London taxi
or at least are concerned that it may not be (i.e. that it may be a private hire vehicle). This perception appears to be most common amongst tourists, but it is not restricted to tourists.
London taxi
which the Vito does not match. They may prefer to ride in an LTC vehicle because it has what they consider a quaint appearance or they may be concerned that the Vito is not a proper licensed
London taxi
or both.
The design of the new Metrocab
taxi
. After an extensive process of development and testing, FNR learnt the harsh reality of the constraints and limitations of such vehicles like battery size, weight, time required to charge the battery pack and range anxiety. Accordingly, Mr Siddiqi directed FNR to work on a hybrid Metrocab. This led to FNR producing a prototype hybrid vehicle based on a Metrocab TTT.
London taxis
. It is likely that Mr Fantolino would have been provided with such materials at some point, but this does not assist LTC.
London taxi
'". As Mr Siddiqi explained in his second witness statement:
"I am aware that those involved in the trade, our competitors, passengers and Transport forLondon
alike all have certain perceptions as to how a licensed
London
cab 'should look' …. there is, effectively, a barrier to entry in the market for licensed cabs which are not recognisable as such – i.e. if a vehicle does not look like a licensed cab, passengers are less likely to hail it. … FNR wanted to avoid producing a
taxi
which may struggle to generate business if it was not recognised by Londoners as a licensed
London
cab. … As a result - in very broad terms - I directed the design of a cab which was recognisable as a licensed
London
cab at a generic level, drawing on the entire history of the sector and the British heritage of automotive designs, but that is distinctive and which clearly differentiates itself from LTC's cabs."
London taxis
" and what Mr Fantolino described in his second witness statement as "a 'vintage look' … related to the 1950s and early 1960s of the British automotive industry." Mr Fantolino went on to say in his second witness statement that Mr Siddiqi had given the example of the Bentley Mulsanne as a modern reinterpretation of a classic design which represented a guideline for what he wanted F&F to achieve.
London taxi
.
"Aim of the project is to provide a comprehensive Product & Design Concept Overview for a new Metro CabTaxi
who will be market in England at a retail price not higher than 30/35 K£.
Frazer Nash is currently engaged in the developing a breakthrough innovation for a clean power train. Together with that, Frazer Nash is considering to design a new body of the Metro Cab in order to match new requirements in terms of ergonomics and internal functionalities. In addition, an innovative design has to communicate even aesthetically the high level of embedded new technologies.
This Product & Design Concept Overview will provide Frazer Nash with a comprehensive understanding of the Product Concepting as the base for relevant future development. Sketches and hi-definition rendering will also help Frazer Nash to choose the most appropriate guidelines in terms of Design, materials, shaping and main functions."
London
and current British
Taxi
Market research". The last phase involved the construction of the physical model on a scale of 1:4. Paragraph 3 was headed "Time schedule" and indicated an 11 week project. Paragraphs 4 and 5 were headed "General" and "Costs description" and were concerned with the financial aspects of the project.
London taxi
market. Again, this is unsurprising. Mr Ancona fairly accepted that it was normal when embarking on a new design to consider the competition.
taxi
before. Moreover, the scope of the project was limited: the end deliverable was merely a 1:4 scale model of the exterior of the proposed vehicle. The project did not include detailed design of the interior, any engineering work or even a full-size model.
"1. As requested we have enclosed Metrocab TTT which gives a visual representation of the last model of our Metrocabtaxi
in production.
2. For comparison and reference, we have also enclosedLondon Taxi
TX4 which is a current model manufactured by our competitor in the UK. Their wheel chair access is similar to what we have. Certainly, your creative flair will be useful."
London taxis
anyway.
taxis
, but bears the number plate "LTI XII". Counsel for LTC suggested that this was a private joke reflecting the nature of F&F's instructions. I accept that it is consistent with F&F referring to LTC's
taxis
during this phase of the design process, but that is not in dispute. I do not accept that it shows any more than that.
TAXI
" light, the appearance of the vehicle depicted is fairly different to the TX.
taxis
in this early phase of the design. Given Mr Siddiqi's own account of the instructions he gave, that is unsurprising. Although F&F's use of the image of the FX4 went further than that, this is not particularly significant. It is evident that F&F was simply using the image as a short-cut to producing an image of a rather different design. Moreover, that particular design does not appear have to been taken forward.
London
1", "
London
2A", "
London
2B", "
London
2" and "Trendy". Each image includes a free-hand sketch of the front of the vehicle together with Photoshopped front-and-side and side views. The appearance of the vehicles depicted in the Photoshopped views is much the same apart from the fronts.
London
2" has a number plate reading "TX4". Furthermore, as Mr Ancona demonstrated, parts of the Photoshopped front-and-side view derive from a promotional photograph of a TX4 taken by LTI in about December 2010. Although Mr Ancona focussed on
London
2A, his analysis is largely applicable to the other images, except that only the images captioned "
London
2A" and "Trendy" also bore the TX4 number plate.
"The New Product Design most [sic] consider the high level of embedded innovation while at the same time ensuring 'evergreen' aesthetics."
taxi
, the Vito and the TXII/TX4. The third section was entitled "Concept Analysis". The first page of this section, headed "packaging constraints" and "current packaging" comprised a diagram which incorporated a Metrocab packaging drawing. The fourth section was entitled "Layout Analysis". This shows that F&F was contemplating accommodating (at least in one version) six passengers. The fifth section was entitled "Confort [sic] and Ergonomics". This included a page incorporating photographs of various different car headlights. The sixth section was entitled "Design Proposal /sketchs" and incorporated some of the images discussed above as well as free-hand sketches. The seventh section was entitled "Design Proposal / renders". This consisted of more highly-finished images for three main proposed designs, captioned "
London
1", "
London
2" and "Trendy", in each case with certain alternatives. The eighth section was entitled "Dashboard" and consisted of a proposed dashboard design. The ninth section was entitled "Contest [sic] Simulation" and consisted of images of two of the proposed designs incorporated into photographs of
London
streets. The last section was entitled "Recommendations & Action Plan".
London
with fare-paying passengers. Multimatic began work in August 2013 and finished the eight vehicles in November 2014. During this work, a number of detailed changes were made to the design, some of which were required to ensure compliance with the Conditions of Fitness. The changes included changes to the headlights, the grille surround, the lower air-intake and number plate positioning, the rear panels and the rear lights. The overall impact of these changes is that the final design of the new Metrocab differs somewhat from F&F's final proposal.
.jpg)
Promotion of the new Metrocab
Taxis
for
London
event on 16 January 2014, and the Mayor was photographed driving the latter. Again, this attracted widespread media coverage. Both the Mayor's Press Office and the participating manufacturers issued press releases in advance of the event. The Defendants' press release quoted "Metrocab Chairman" Sir Charles Masefield as saying (emphasis added):
"The all-new Range Extended Electric Metrocab has been in development since the mid-2000s with several prototypes built and over a million kilometres of testing. Instantly recognisable as an iconicLondon
Hackney Cab with a panoramic glass roof for views of the City, our new all-British
London
cab offers, for no price premium, completely new levels of economy, emissions and passenger comfort and is ready to enter service this year, benefitting [sic] the passenger, driver, city and environment alike."
LTC relies upon the words that I have emphasised as supporting its case. In my judgment, however, they are entirely consistent with Mr Siddiqi's evidence discussed above.
London
. I am not persuaded that there is anything sinister about this. The video is clearly designed to show the new Metrocab fitting into the context of
London
. As LTC itself points out, the video also includes emblems of
London
such as the Tower of
London
, the Shard, an Underground sign and a telephone box.
Trial of the new Metrocab
London taxis
on a trial basis. Since then FNR, in partnership with ComCab, has had three of the vehicles in operation at any one time. Mr Butler and Mr Preston Morris are two of the drivers who have driven these trial vehicles. The Defendants have collated and disclosed all feedback about the new Metrocab which they have received via a dedicated website. None of this indicates that anyone has confused the new Metrocab with any of LTC's cabs or thought that it was produced by, or otherwise connected with, LTC. On the other hand, there have been a fair number of comments to the effect that it "looks like a proper
London taxi
". The Defendants have continued to make small changes to the vehicle as a result of the feedback received.
.gif)
Production of the new Metrocab
Do the Defendants intend to deceive the public?
taxi
which conformed to the perceptions of the trade and public and was recognisable as a
London taxi
. I have also concluded that, consistently with those instructions and as would be expected in any event, F&F referred to the design of LTC's
taxis
during the design process. I have also found that F&F made specific, but limited, use of images of an FX4 and TX4 in their work. I have not accepted that FNR instructed F&F to update or face-lift the TX4.
taxis
, which is an allegation of fraud. I have no hesitation in rejecting that allegation. In my judgment the evidence does not begin to support it, for three main reasons. First, as explained above, I am not satisfied that FNR instructed F&F to update or face-lift the TX4. Secondly, as explained in more detail below with specific reference to the Fairway and TX1, I consider that the design of the new Metrocab is different to that of LTC's
taxis
in many respects. Thirdly, even if I had been satisfied that FNR had instructed its contractors substantially to copy the design of the TX4 and that its contractors had done so, the intention imputed to the Defendants by LTC is deeply implausible. LTC does not suggest that the Defendants intend to deceive
taxi
drivers as to the origin of the new Metrocab, or even that
taxi
drivers will in fact be deceived as to its origin. Rather, LTC contends that the Defendants intend to deceive
taxi
passengers (that is to say, consumers of
taxi
services) as to the origin of the new Metrocab. But how would that benefit the Defendants if the
taxi
drivers, who are their customers, are not deceived? As explained in more detail below, there is no evidence that
taxi
drivers would be more likely to purchase the new Metrocab if some of their passengers thought that it emanated from the same source as LTC's
taxis
. There is evidence from which it may be inferred that
taxi
drivers would be more likely, all other things being equal, to purchase a new
taxi
if it was readily recognisable as a licensed
London taxi
than if it was not; but that is not the same thing.
Potential collaboration between LTI and FNR in 2005
taxi
based on the TXII. The parties could not agree commercial terms, and therefore the discussions went nowhere. I am satisfied that this episode has no relevance to the issues in these proceedings.
The design of the TX5
Taxis
for
London
event on 16 January 2014.
taxi
(i.e. the TX5). Precisely what Mr Zeghibe was shown is not clear, however. Moreover, Mr Zeghibe's recollection was that he had been told by LTC that LTC had made two prototypes of the new vehicle.
The incident involving Mr Zeghibe
taxi
at 7:50 am to take him from his home to his place of work. Mr Butler obtained the booking driving one of the new Metrocabs. On emerging from his house, Mr Zeghibe thought the vehicle looked like the images of the TX5 design which he had previously been shown by LTC, and he therefore assumed that the vehicle was a prototype TX5. Mr Zeghibe was surprised by and interested in this, as LTC had not mentioned that it was road-testing the prototypes. When Mr Zeghibe got in, he and Mr Butler recognised each other since they had met before, as Mr Butler is a longstanding Hailo user. Mr Zeghibe immediately started a conversation with Mr Butler. Unsurprisingly, they remembered the conversation slightly differently, but not in any respect that matters. Mr Zeghibe commented on the new vehicle that Mr Butler was driving, and in particular its Volvo chassis or engine. Mr Butler quickly realised that Mr Zeghibe was mistaken, and said "No, this is a Metrocab". It was only after this that Mr Zeghibe noticed the Metrocab advertising on the tip-up seats. He had not noticed the Metrocab advertising on the exterior of the vehicle when getting into it.
Key legislative provisions
"Article 3
Grounds for refusal or invalidity
1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
..
(b) trade marks which are devoid of any distinctive character;
…
(e) signs which consist exclusively of:
…
(iii) the shape which gives substantial value to the goods;
…
3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.
Article 5
Rights conferred by a trade mark
1. The registered 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:
…
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the 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.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State 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 trade mark. 5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purpose of distinguishing goods or services, where use of that sign without due cause take unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Article 6
Limitation of the effects of a trade mark
1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
…
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;
…
provided he uses them in accordance with honest practices in industrial or commercial matters."
"Article 15
Use of Community trade marks
1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first subparagraph:
(a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
…
Article 51
Grounds for revocation
1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor's rights in a Community trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
…
2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only."
Articles 10(1) and 12(1) of the Directive correspond to these provisions.
The average consumer
The law
The average consumer in the present case
taxis
, it is common ground that the goods of interest for the purposes of determining the issues of both validity and infringement are
taxis
, and that it is not necessary to consider other types of vehicles falling with the specifications. Counsel for LTC submitted that there were two average consumers in the present case, namely (i)
taxi
drivers, and (ii) members of the public who hired
taxis
. In addition, as will appear, LTC's case focuses on the second of these.
taxis
were relevant consumers because they were end users of the goods. In support of this submission, he cited a number of authorities: Case C-371/02 Björnekulla Fruktindustrier AB v Procordia Food AB [2004] ECR I-5971, Case C-412/05 P Alcon Inc v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2007] ECR I-3569, Schütz (UK) Ltd v Delta Containers Ltd [2011] EWHC 1712 (Ch), Case C-409/12 Backaldrin Österreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH [EU:C:2014:130], [2014] ETMR 30 and Supreme Petfoods v Henry Bell & Co (Grantham) [2015] EWHC 2456 (Ch), [2015] ETMR 20. It is not necessary for me to discuss those authorities, however, since they are all clearly distinguishable from the present case. In my judgment members of the public who hire
taxis
are consumers of
taxi
services, and not of
taxis
. They are not end users of the goods, they are users of the service provided by the consumer of the goods.
taxi
drivers would take the reactions (or at least the perceived reactions) of the consumers of
taxi
services to the design of
taxis
into account when deciding which
taxi
to purchase. I accept that, as indicated above, this is one of the factors which
taxi
drivers take into account.
taxis
are expensive and specialised vehicles,
taxi
drivers are knowledgeable and careful purchasers, that is to say, their level of attention is fairly high. It is also common ground that, since
taxi
services are inexpensive and since consumers are often in a hurry, the level of attention paid by consumers of
taxi
services is fairly low.
Validity of the Trade Marks: distinctive character
Inherent distinctive character
"42. According to settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 it must serve to identify the goods in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (see, in particular, Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 34; Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 29, and Case C-238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 79).
43. That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration is sought and, second, by reference to the perception of the relevant public (see, in particular, Henkel v OHIM, paragraph 35; Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 25, and Develey v OHIM, paragraph 79).
…
45. It is also settled case-law that, the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see, in particular, Mag Instrument v OHIM, paragraph 30; Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 27; Storck v OHIM, paragraph 26, and Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 36).
46. However, when those criteria are applied, account must be taken of the fact that the perception of the average consumer is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark consisting of a sign which is independent of the appearance of the products it designates. 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 packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, in particular, Mag Instrument v OHIM, paragraph 30; Deutsche SiSi-Werke v OHIM, paragraph 28, and Storck v OHIM, paragraph 27).
47. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (see, in particular, Mag Instrument v OHIM, paragraph 31; Deutsche SiSi-Werke v OHIM, paragraph 31, and Storck v OHIM, paragraph 28)."
"… That means the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect (see, to that effect, in relation to Article 3(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), which is identical to Article 7(1)(b) of Regulation No 40/94, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 50 and the case-law cited there; see also Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 35 and the case-law cited there)."
"25. In the present case, the Board of Appeal correctly observed, in paragraph 20 of the contested decision, that the sign applied for depicts an apparatus for locomotion by land and not an apparatus for locomotion by air or water. It must, therefore, be regarded as departing significantly from the norm and customs of the sector for apparatus for locomotion by air and water and, consequently, as not being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. The Board of Appeal was therefore correct in annulling the examiner's decision as regards 'apparatus for locomotion by air or water' in Class 12 and allowing the application for registration in respect of those goods.
26. However, it must be stated that the same reasoning ought to have led the Board of Appeal also to annul the examiner's decision as regards 'vehicles for locomotion by air and water' in Class 12 and allow the application for registration in respect of those goods. The sign applied for depicts an apparatus for locomotion by land and not 'vehicles for locomotion by air and water'. It must, therefore, be regarded as departing significantly from the norm and customs of the sector for vehicles for locomotion by air and water and, consequently, as not being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009. It follows that the contested decision must be annulled in so far as it refused registration of the mark applied for as regards 'vehicles for locomotion by air and water' in Class 12."
"It follows that the arguments put forward by the applicant in support of its single plea in law are not capable of calling into question the Board of Appeal's assessment that, as regards goods other than 'vehicles for locomotion by air and water' in Class 12, the mark at issue, rather than departing significantly from the norm or customs of the sector, is merely a variation of the typical shape of a car and is, therefore, devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009."
"25. With that I can turn to Mr Malynicz's main point—that a very fancy shape is necessarily enough to confer an inherent distinctive character. I would reject it. As a matter of principle I do not accept that just because a shape is unusual for the kind of goods concerned, the public will automatically take it as denoting trade origin, as being the badge of the maker. At the heart of trade mark law is the function of a trade mark—expressed in Recital 10 of the Directive as an indication of origin. The perception of the public—of the average consumer is what matters. Mr Daniel Alexander Q.C., for the Registrar, helpfully pointed out that the kinds of sign which may be registered fall into a kind of spectrum as regards public perception. This starts with the most distinctive forms such as invented words and fancy devices. In the middle are things such as semidescriptive words and devices. Towards the end are shapes of containers. The end would be the very shape of the goods. Signs at the beginning of the spectrum are of their very nature likely to be taken as put on the goods to tell you who made them. Even containers, such as the fancy Henkel container, may be perceived as chosen especially by the maker of the contents (e.g. shampoo) to say 'look—here is the product of me, the maker of the contents'. But, at the very end of the spectrum, the shape of goods as such is unlikely to convey such a message. The public is not used to mere shapes conveying trade mark significance, as the Court pointed out in Henkel (detergent tablets). …
26. As regards the sentence from Henkel (detergent tablets) quoted above at [13], I do not read the Court as saying—almost as an incidental matter—that a fancy shape is ipso facto enough for registration. Mr Malynicz suggests we read 'thereby' as 'therefore'. I think the Court is saying no more than that fancy shapes—those which depart significantly from the norm—may fulfil the essential function, not that they must. The approach in Mag Instrument is particularly instructive. What matters is:
'the presumed expectations of an average consumer' ([7])
In that case the fact that the shapes of the torches had in fact become well-known after the date of application was not enough to prove they had inherent distinctiveness within the meaning of Art.7(1)(b) of the Community Trade Mark Regulation (equivalent to Art.3(1)(b) of the Directive) ([64]).
27. So I think Mr Malynicz's principal contention is wrong. Even if the shape of the goods themselves is indeed fancy, that is not enough to entitle a would-be trader in them to registration as a trade mark. (I say would-be because one is here working on the hypothesis of an unused mark.) Although a trade mark may also be a design, there are real differences between creating a fancy shape to sell as such and a fancy shape which truly in itself will denote trade origin if used. In so holding I am not saying (and indeed Mr Alexander did not contend otherwise) that a shape of goods (including that of a cheese) cannot become a trade mark by acceptance as such by the public. Mere use may not be enough, but if it can be shown that, following such use, the average consumer has come to say: 'by this shape I know I can rely upon getting goods from the same maker as before', then the design of goods will also have become a trade mark. Registration pursuant to Art.3(3) would then be permissible because the shape would have acquired a distinctive character in the trade mark sense."
taxis
. Neither side suggested that the assessment should differ as between the countries covered by the CTM, but it is convenient to concentrate on the average consumer in the UK. Counsel for LTC submitted that both the Trade Marks looked different to other cars, and in particular looked like 1950s cars. I accept both points, but in my judgment neither suffices to establish that the CTM would be regarded as departing significantly from the norms and customs of the sector. In my view the CTM would have been perceived by the average consumer of
taxis
as a merely a variation of the typical shape of a
taxi
. I should make it clear that, if one considers the question from the perspective of the average consumer of cars, in my view the CTM would be perceived as merely a variation of the typical shape of a car. Furthermore, even if the shape was regarded as departing significantly from the norms and customs of the sector, it would not have been perceived as identifying the origin of the goods. Accordingly, I conclude that the CTM was devoid of inherent distinctive character. This assessment coincides with that of the OHIM examiner, which LTI did not challenge by way of an appeal. I should make it clear that my assessment would not differ if, contrary to the conclusion I have reached above, the relevant average consumer consists of or includes a consumer of
taxi
services.
taxis
. In my judgment the UKTM would also have been perceived by the average consumer of
taxis
as a merely a variation of the typical shape of a
taxis
. Again, the answer would be the same if considered from the perspective of the average consumer of cars. Furthermore, even if the shape was regarded as departing significantly from the norms and customs of the sector, it would not have been perceived as identifying the origin of the goods. Accordingly, I conclude that the UKTM was devoid of inherent distinctive character. This assessment coincides with that of the Trade Marks Registry examiner, which LTI did not challenge by way of an appeal. Again, my assessment would not differ if, contrary to the conclusion I have reached above, the relevant average consumer consists of or includes a consumer of
taxi
services.
Acquired distinctive character
"In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95 ..., is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant's goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?"
"In order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company."
taxi
services in the UK (or at least residents of, and visitors to,
London
). Counsel for LTC did not contend that, if the Trade Marks had not become distinctive to consumers of
taxi
services, they had nevertheless become distinctive to
taxi
drivers. I have already concluded that the relevant average consumer is a
taxi
driver, and not a consumer of
taxi
services. I shall therefore undertake an assessment from the perspective of the average
taxi
driver before turning to consider LTC's case. I shall do so by reference to the criteria specified in the case law of the CJEU.
taxis
suitable for use as licensed
London taxis
, then as at May 2014 the share of the market for new vehicles held by goods bearing the CTM and the UKTM was nil, since neither the Fairway nor the TX1/TXII was still in production. As for licensed
London taxis
which were in use, taking the TfL data for June 2014, which are the nearest to the date of the counterclaim available, there were 16 Fairways (0.1%), 5125 TX1s (22.3%) and 6238 TXIIs (27.1%) out of 23,022. Thus about half of all licensed
London taxis
on the road were TX1/TXIIs, but virtually none of them were Fairways.
London
, although some vehicles were sold to and used by
taxi
drivers in other British cities. The use had lasted from 1989 to 1997 (Fairway/CTM) and from 1997 to 2006 (TX1 and TXII/UKTM). Mr Johansen's evidence was that it was reasonable to estimate that a total of 16,507 Fairways and 23,894 TX1/TXIIs had been sold. The
taxis
continued to be used for some 15 years after sale.
Taxi
" with the strapline "Building a British Icon" and a photograph of the front of a TXII. Underneath the photograph was text which included the statements "Purpose-built and distinctive" and "A Great British Icon!". At the bottom of the advertisement was the LTI trade mark set out in paragraph 76 above. In my view there is nothing in this advertisement which conveys the message that the shape of the TXII denotes its trade origin.
London taxis
generally, and its
taxis
specifically, have frequently been described by journalists and others as "iconic" or "icons of
London
" or the like. Mr Johansen exhibited a reasonably substantial collection of articles and other materials of this nature. In my view this evidence does not assist LTC, however. In context, it is clear that all such descriptions mean is that LTC's
taxis
are well known, regarded with affection and identified with
London
.
taxis
had received prominent exposure in the media. Perhaps the best example of this, although by no means the only one, is the closing ceremony of the
London
Olympics in 2012, which featured a fleet of Fairways and TX4s. The BBC1 coverage of the closing ceremony was watched by 22.9 million viewers in the UK alone, and many millions more worldwide. I accept that exposure like this will have increased the familiarity of consumers, particularly consumers who are visitors to, rather than resident in,
London
, with the shapes of LTC's
taxis
. I do not accept that it will have done anything to educate them that those shapes denoted the source of those
taxis
.
taxi
drivers perceive
taxis
embodying the CTM or UKTM as emanating from LTI/LTC because of their shapes as opposed to the conventional trade marks under and by reference to which the vehicles are sold. Although LTC adduced evidence from a number of
taxi
drivers (and
taxi
fleet owners), none of them gave evidence which went this far. Still less is there any evidence which establishes that a substantial proportion of
taxi
drivers perceive
taxis
embodying the CTM or UKTM as emanating from LTI/LTC because of their shapes.
taxi
drivers in the UK (or even in
London
) as at May 2014.
taxi
services. Counsel for LTC accepted that there was no direct evidence that the appearance of the Fairway (the CTM) and the TX1/TXII (the UKTM) had become distinctive of the source of those
taxis
to a substantial proportion of consumers of
taxi
services even in
London
. (For example, there is no survey evidence.) Nevertheless, he submitted that this should be inferred from a combination of four factors:
i) the fact that LTI and LTC have had a de facto monopoly of
taxis
having a similar appearance in
London
for decades;
ii) the absence of anything other than shape which could indicate trade origin;
iii) the fact that LTI and LTC had had a policy to preserve the distinctive appearance of their
taxis
through successive models;
iv) the steps taken by LTI and LTC to educate the public.
taxi
services identify the source of LTC's
taxis
because of the shape of those
taxis
. Considering them in turn:
i) In fact LTI and LTC have not had a monopoly since December 1986 when the old Metrocab was launched. Although production of the old Metrocab was intermittent and on a small scale from December 2000 onwards, and ceased in August 2006, substantial numbers of old Metrocabs remained in use on the streets of
London
after that down to December 2014. LTI and LTC made no complaint of trade mark infringement or passing off in respect of the old Metrocab. It follows that LTI and LTC must be taken to have accepted that the shape of the old Metrocab did not deceive the public. It is true that the shape of the Metrocab was noticeably different to that of LTC's
taxis
, but nevertheless it follows that, if and to the extent that consumers of
taxi
services care about the trade origin of
taxis
they hired, they will have learnt that licensed
London taxis
of a different shape to LTC's
taxis
had a different origin.
ii) In fact the trade origin of LTC's
taxis
is and always has been indicated in the convenient manner in which the origin of cars and other vehicles, namely by means of badges on the front and rear of the vehicles bearing the trade marks set out in paragraph 76 above. It is fair to say that neither LTI nor LTC have particularly well-known badges (or even names), but nevertheless anyone who cared about the origin of an LTC
taxi
could rapidly find out by looking at the badge.
iii) I accept that LTI's approach to the design of their
taxis
from the Fairway to the TX4 was an evolutionary one, which involved the introduction of successive models that represented an update on the appearance of the previous model rather than a complete break from it. But at best, from LTC's perspective, all this shows is that
taxi
drivers wanted, and LTC knew they wanted, vehicles which would be recognisable by consumers of
taxi
services as licensed
London taxis
. It does not show that consumers of
taxi
services relied upon the appearance of LTC's
taxis
.
iv) I accept that LTI and LTC have taken steps to educate the public that they were the manufacturers of their
taxis
, but LTI and LTC did not take any steps to educate the public that the shape of their
taxis
denoted the trade origin of those
taxis
.
taxi
services should care about the origin of the
taxis
driven by
taxi
drivers. I accept that the evidence shows that consumers of
taxi
services in
London
have, to a greater or lesser extent, preconceptions about what a licensed
London taxi
looks like which have, to a greater or lesser extent, been influenced by the presence on
London
's streets of LTC's
taxis
. But provided that a vehicle is a licensed
London taxi
, that it sufficiently conforms to those preconceptions and that it is sufficiently comfortable and reliable, the identity of the manufacturer is surely a matter of indifference to consumers of
taxi
services.
taxis
services, as LTC contends, I conclude that LTC has not demonstrated that either of the Trade Marks had acquired a distinctive character as at May 2014.
Validity of the Trade Marks: substantial value
The law
"(a) Does the ground for refusal or invalidity in [the third indent of] Article 3(1)(e) of Directive [89/104], namely, that [three-dimensional] trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public's decision to purchase?
(b) Does a 'shape which gives substantial value to the goods' within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?
(c) For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is 'substantial' within the meaning of the aforementioned provision?
(d) If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?"
"… serve to protect fair competition by making it impossible to monopolise the basic characteristics of a product which are essential from the point of view of effective competition on the market concerned. In particular, they also serve to maintain the balance of interests which the legislature established by placing a time-limit on the protection conferred by certain other intellectual property rights."
"I have the impression that all the interpretations of the third indent of Article 3(1)(e) that have been considered in academic writings and case-law are based on similar teleological premises. Those considerations arise from the assumption that the purpose of prohibiting the registration of shapes which give substantial value to the product is to demarcate the protection conferred by trade marks and that conferred by other intangible assets (subject to protection on the basis of industrial designs and copyright). Therefore, in making an interpretation of the provision at issue, it is necessary to try to preclude a situation where a trade mark right is exercised exclusively for purposes which other intellectual property rights serve to attain."
"79. In my view, the interpretation of that provision must seek to confer on it a meaning which is compatible with the general objective pursued by Article 3(1)(e) of Directive 89/104. That provision serves to ensure that the protection conferred by the trade mark is not used for a purpose other than that for which it was laid down, and in particular that it is not used to gain an unfair market advantage which does not result from competition based on price and quality.
80. As I read it, the ground contained in the third indent of Article 3(1)(e) is designed to prevent the monopolisation of the external features of goods which do not perform a technical or practical function and at the same time substantially enhance the attractiveness of goods and strongly influence consumer preferences.
81. On that interpretation, the scope of the ground laid down in the third indent of the provision at issue does not merely cover works of art or functional art. It also extends to all other practical objects in respect of which design is one of the fundamental elements which determine their attractiveness, and thus the market success of the goods concerned.
…
85. The interpretation of that provision which I am proposing takes account of the fact that a particular product may perform multiple functions. There is no doubt that in addition to its original practical function (for example, a loudspeaker as an appliance for listening to music) a product can also satisfy other consumer needs. It is conceivable that a substantial value of the product results not only from the features which serve to carry out its practical function but also from its aesthetic qualities (for example, a loudspeaker can also perform a decorative function). The fact that a particular product performs a decorative as well as a practical function does not, in my opinion, rule out the possibility of applying the third indent of Article 3(1)(e) of Directive 89/104. …"
" ... the perception of the shape concerned by the consumer is not the decisive assessment criterion. It constitutes one of several, fundamentally objective facts which demonstrate that the aesthetic characteristics of a shape affect the attractiveness of the goods to such an extent that the reservation thereof to a single undertaking would distort competition on the market concerned. Other such circumstances are, for example: the nature of the category of goods under consideration, the artistic value of the shape concerned, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to other competing products with similar characteristics, and the development by the manufacturer of a promotion strategy emphasising principally the aesthetic characteristics of the goods concerned."
"The term shape 'which gives substantial value to the goods' within the meaning of the third indent of Article 3(1)(e) of that directive relates to a shape whose aesthetic characteristics constitute one of the principal elements determining the market value of the product concerned, which is at the same time one of the reasons for the consumer's decision to purchase. That interpretation does not preclude the goods from having other characteristics which are important to the consumer.
The perception of the average consumer is one of the circumstances which must be taken into consideration in assessing the application of the ground for refusal under consideration. Those circumstances include, inter alia, the nature of the category of goods under consideration, the artistic value of the shape concerned, its dissimilarity from other shapes in common use on the market concerned, the substantial price difference in relation to competing products, and a promotion strategy emphasising principally the aesthetic characteristics of the goods concerned. None of those circumstances is decisive per se."
"By its second question, the referring court asks, in essence, whether the third indent of Article 3(1)(e) of the trade marks directive is to be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value and if it is necessary to take the target public's perception of the shape of that product into account during that assessment."
"30. In that regard, the fact that the shape of a product is regarded as giving substantial value to that product does not mean that other characteristics may not also give the product significant value.
31. Thus, the aim of preventing the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods requires — as the Advocate General observed in point 85 of his Opinion — that the possibility of applying the third indent of Article 3(1)(e) of the trade marks directive not be automatically ruled out when, in addition to its aesthetic function, the product concerned also performs other essential functions.
32. Indeed, the concept of a 'shape which gives substantial value to the goods' cannot be limited purely to the shape of products having only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered. In that case, the right conferred by the trade mark on its proprietor would grant that proprietor a monopoly on the essential characteristics of such products, which would not allow the objective of that ground for refusal to be fully realised.
…
34. The presumed perception of the sign by the average consumer is not a decisive element when applying the ground for refusal set out in the third indent of the latter provision, but may, at most, be a relevant criterion of assessment for the competent authority in identifying the essential characteristics of that sign (see, to that effect, judgment in Lego Juris v OHIM, EU:C:2010:516, paragraph 76).
35. In that regard, as the Advocate General indicated in point 93 of his Opinion, other assessment criteria may also be taken into account, such as the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question.
36. In the light of the foregoing, the answer to the second question is that the third indent of Article 3(1)(e) of the trade marks directive must be interpreted as meaning that the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public's perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable."
"98. In [Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475] Advocate General Ruiz-Carabo Colomer stated in his Opinion … at [30]:
'The immediate purpose in barring registration of merely functional shapes or shapes which give substantial value to the goods is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the legislature has sought to make subject to limited periods. I refer, specifically, to the legislation on industrial patents and designs.'
99. This is helpful guidance. However, many aspects of shape are protectable by a wide variety of design laws and accordingly regard must therefore be had to the express requirement that the shape must add substantial value. The importance of this was recognised by the Court of Appeal in Philips [1999] R.P.C. 809 where Aldous L.J. said at 822–833:
'The subsection is only concerned with shapes having "substantial value". That requires a conclusion as to whether the value is substantial, which in my view requires that a comparison has to be made between the shape sought to be registered and the shapes of equivalent articles. It is only if the shape sought to be registered has, in relative terms, substantial value that it will be excluded from registration.
In the present case, the shape registered by Philips has a substantial reputation built up by advertising and reliability and the like. That in my view is not relevant. What has to be considered is the shape as a shape. If that is done I do not believe that the evidence established that the registered shape has any more value than other shapes which were established to be as good as and as cheap as that which is registered …'
100. Two important points emerge from this passage. First, the mark may have a large goodwill associated with it derived from sales and advertising. This will no doubt have a substantial value. But it is not relevant. It is the shape itself which must add substantial value. Secondly, it is relevant to make a comparison with the shapes of equivalent articles. It is only if the shape in issue has a high value relative to such other shapes that it will be excluded from registration."
The relevant date
Assessment
i) Consumer perception: by 1 December 2006 the TX1 had been on sale for over nine years. As I have said above, any goodwill generated by such sales must be disregarded. It does not follow that the UKTM must be treated as if it were an unused mark. It is implicit in LTC's own case that, as at that date, the average consumer in the UK would recognise the shape as that of a
London taxi
. The shape is thus one which consumers placed a value on.
ii) The category of the goods: the goods in question are cars. It is well-recognised that car body shapes have aesthetic qualities as well as functional ones. Furthermore, there is ample evidence that many people preferred the rounded shape of the TX1 to the more angular Metrocab (although some preferred the Metrocab).
iii) The artistic value of the shape: it is LTC's own case and evidence that the design of the TX1, like the other LTI/LTC designs, was regarded as "iconic" and a "design classic".
iv) The dissimilarity of the shape from other shapes in common use: it is common ground that, apart from LTI's predecessor vehicles, the shape of the TX1 was dissimilar to that of other cars in December 2006.
v) The price of the goods: LTC relies strongly on the fact that its
taxis
do not command a price premium compared to other
taxis
. Thus Mr Johansen gave unchallenged evidence (based on information from Mr Overton) that the pricing of the Fairway and TX1 had always been competitive with that of the old Metrocab. Specifically, Mr Johansen was able to produce price lists for the TX1 and Metrocab TTT dating from March 2000 showing that the entry level TX1 was slightly cheaper than the cheapest Metrocab TTT. Similarly, the TX4 is currently less expensive than the Vito. On the other hand, all of these vehicles were and are quite expensive compared to ordinary saloons. There is little evidence as to the reasons for these differences. The most one can say is that the appearance of the vehicle does not appear to be a significant factor.
vi) The manufacturer's promotional strategy: as discussed above, by December 2006 LTC was promoting its
taxis
as being "iconic", and at least to that extent emphasising their appearance.
London taxi
, and regarded as iconic. Overall, my conclusion is the same: the shape added substantial value to the goods. Furthermore, upholding the objection is consistent with the purpose of Article 7(1)(e)(iii) since it prevents LTC from obtaining a permanent monopoly in the shape rather than the 25-year monopoly available through registration of a design.
Revocation of the CTM
taxis
. In the alternative, LTC relies upon sales during this period of TX1, TXII and TX4
taxis
as being use of the CTM in a form differing in elements which do not alter the distinctive character of the CTM.
Use of the CTM itself
(1) Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark: Ansul at [35] and [37].
(2) The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark: Ansul at [36]; Sunrider at [70]; Verein at [13]; Centrotherm at [71]; Leno at [29].
(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin: Ansul at [36]; Sunrider at [70]; Verein at [13]; Silberquelle at [17]; Centrotherm at [71]; Leno at [29].
(4) Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns: Ansul at [37]. Internal use by the proprietor does not suffice: Ansul at [37]; Verein at [14]. Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle at [20]-[21]. But use by a non-profit making association can constitute genuine use: Verein at [16]-[23].
(5) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d'être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark: Ansul at [37]-[38]; Verein at [14]; Silberquelle at [18]; Centrotherm at [71].
(6) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use: Ansul at [38] and [39]; La Mer at [22]-[23]; Sunrider at [70]-[71], [76]; Centrotherm at [72]-[76]; Reber at [29], [32]-[34]; Leno at [29]-[30], [56].
(7) Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule: Ansul at [39]; La Mer at [21], [24] and [25]; Sunrider at [72]; Leno at [55].
(8) It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use: Reber at [32].
"40. Use of the mark may also in certain circumstances be genuine for goods in respect of which it is registered that were sold at one time but are no longer available.
41. That applies, inter alia, where the proprietor of the trade mark under which such goods were put on the market sells parts which are integral to the make-up or structure of the goods previously sold, and for which he makes actual use of the same mark …. Since the parts are integral to those goods and are sold under the same mark, genuine use of the mark for those parts must be considered to relate to the goods previously sold and to serve to preserve the proprietor's rights in respect of those goods.
42. The same may be true where the trade mark proprietor makes actual use of the mark, under the same conditions, for goods and services which, though not integral to the make-up or structure of the goods previously sold, are directly related to those goods and intended to meet the needs of customers of those goods. That may apply to after-sales services, such as the sale of accessories or related parts, or the supply of maintenance and repair services."
(9) The territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to genuine use in the Community: Leno at [44], [57].
(10) While it is reasonable to expect that a Community trade mark should be used in a larger area than a national trade mark, it is not necessary that the mark should be used in an extensive geographical area for the use to be deemed genuine, since this depends on the characteristics of the goods or services and the market for them: Leno at [50], [54]-[55].
(11) It cannot be ruled out that, in certain circumstances, the market for the goods or services in question is in fact restricted to the territory of a single Member State, and in such a case use of the Community trade mark in that territory might satisfy the conditions for genuine use of a Community trade mark: Leno at [50].
London
and the Thames Valley. On that basis, the General Court dismissed the applicant's challenge to the Board of Appeal's conclusion that there had been genuine use of the mark in the Community. At first blush, this appears to be a decision to the effect that use in rather less than the whole of one Member State is sufficient to constitute genuine use in the Community. On closer examination, however, it appears that the applicant's argument was not that use within
London
and the Thames Valley was not sufficient to constitute genuine use in the Community, but rather that the Board of Appeal was wrong to find that the mark had been used in those areas, and that it should have found that the mark had only been used in parts of
London
: see [42] and [54]-[58]. This stance may have been due to the fact that the applicant was based in Guildford, and thus a finding which still left open the possibility of conversion of the Community trade mark to a national trade mark may not have sufficed for its purposes.
taxis
which LTI and LTC were selling, and which then LTI and LTC then re-sold. With the sole exception of one sale to a customer in Italy in December 2009 for a price of £2,000, all of these sales were in the UK. In addition, LTI and LTC disposed of 314 Fairways for scrap, the majority of which were given away for free, but nearly 70 of which were sold at prices ranging from £50 to £150, making an average sale price of £26.
i) The nature of the goods is that they are cars, or more specifically
taxis
, or still more specifically
taxis
suitable for use as licensed
London taxis
.
ii) The market concerned is the market for cars, or more specifically
taxis
or still more specifically
taxis
suitable for use as licensed
London taxis
. The market for cars is in principle a Community-wide one, but I think I can take judicial notice that it is one that is to some extent divided into different national territories. Cars, and in particular
taxis
, are expensive items when purchased new, albeit rather less so when purchased used, particularly as they become older. Thus one does not expect to see huge quantities of such goods sold. Nevertheless, the market is a fairly substantial one. As can be seen from the figures quoted above, even the market for new
taxis
suitable for use as licensed
London taxis
amounts to a fairly substantial number annually.
iii) The scale of use of the CTM in terms of the number of used vehicles was modest, but cannot be described as negligible. Moreover, the use extended over most of the period in question, although it dropped off towards the end of the period (only one vehicle was sold in 2013 and none in 2014).
iv) The CTM was only used in relation to
taxis
, and more specifically
taxis
suitable for use as licensed
London taxis
.
v) The territorial extent of the use was essentially confined to the UK. I consider that the single sale to Italy should be disregarded as being literally a one-off.
vi) It does not appear that the proprietor could have provided significantly greater evidence in relation to the use it relies on.
vii) To my mind, the key consideration is the nature of the activity relied upon. Even assuming that the sales of used vehicles constituted use of the CTM, this simply amounted to recirculation of goods which had already been put on the market under the CTM long beforehand. Moreover, the average price achieved was a fraction of the price of a new
taxi
at the time (in the region of £30,000). This did not help to create or maintain a share of the market for vehicles bearing the CTM. On the contrary, production of those vehicles had long since ceased and been superseded by the production of later models. Moreover, even the sales of used vehicles dried up.
Use of the CTM in a form differing in elements which do not alter its distinctive character
taxi
" compared to the Fairway in a presentation to launch the TX4. Moreover, Jevon Thorpe, LTI's then managing director, was quoted in a newspaper article in 1998 as saying that "Early styling clinics told us that potential buyers hated the new shape, but you often find that people don't know what they want until they get it". This evidence confirms the evidence of one's eyes, which is that the TX1 is clearly different in its appearance in a variety of respects to the Fairway, and hence the CTM. In my judgment these differences do alter any distinctive character the CTM may have had. The TX4 is more different still.
Conclusion
Conversion of the CTM
Relevant date for assessment of the issues on infringement of the Trade Marks
Approach to the issues on infringement
i) both of the Trade Marks had at least a modest degree of either inherent or acquired distinctive character;
ii) neither of the Trade Marks is invalid on the grounds that it consists of the shape which gives substantial value to the goods; and
iii) there has been genuine use of the CTM in the Community.
Infringement of the Trade Marks under Article 9(1)(b)/Article 5(1)(b)
The law
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
"… the court must take into account all of the circumstances of the actual use of the sign that are likely to operate in the average user's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context".
Assessment
taxi
driver. LTC does not suggest that there is a likelihood of confusion on the part of
taxi
drivers as a result of the use of the sign it complains of, but rather contends that there is a likelihood of confusion on the part of members of the public who hire
taxis
. In my judgment this is fatal to the claim under Article 9(1)(b)/Article 5(1)(b), for it amounts to a concession that there is no likelihood of confusion on the part of the relevant average consumer. Although I have accepted that
taxi
drivers will take the perceived reactions of consumers of their services into account, I fail to understand how a likelihood of confusion on the part of consumers of
taxi
services, even if there was one, could be relevant given the absence of any likelihood of confusion on the part of the
taxi
driver.
taxi
services. As noted above, the degree of attention paid by consumers of
taxi
services will be significantly lower than that of
taxi
drivers.
taxi
services do not always pay attention to advertising on the exterior of
taxis
. Secondly, even if consumers did pay attention to the advertising, and even if they appreciated that it related to the trade origin of the vehicle bearing the advertising, there is no reason to think that all consumers would be aware that the Metrocab trade mark denoted a different trade origin to that of the Trade Marks. Thirdly, although counsel for the Defendants submitted that there was no evidence of any threat on the part of the Defendants to market cabs without the prominent Metrocab advertising, it seems to me to be manifest that the Defendants are likely to do so. In any event, they cannot stop purchasers of their vehicles repainting them, in particular with third party advertising material.
taxis
do, although this is omitted from the Trade Marks). Again, counsel for the Defendants relied on this as reinforcing the absence of any likelihood of confusion. Again, I do not accept that this factor assists the Defendants, however, for the second of the three reasons given in the preceding paragraph.
taxi
services sees when hailing a
taxi
in the street. I accept that the front view is the most important view in those circumstances, but I do not accept that it is of predominant significance. Consumers of
taxi
services see
taxis
from a variety of angles depending on the circumstances. At a rank, for example, the main view can easily be the side view. Even when hailing a
taxi
, the consumer will see the side view when getting into the
taxi
. Not infrequently the consumer will also see the rear view (i.e. if the
taxi
has stopped beyond where they were standing).
taxi
services also see
taxis
under a variety of conditions, including different weather conditions, times of day and street lighting. I agree with LTC that allowance must be made for this when comparing the shape of the Metrocab with the Trade Marks.
TAXI
" light on the roof; (vi) round headlights flanking the grille; and (vii) a generally rounded body shape. As counsel for the Defendants submitted, however, each of these features is implemented in a visually distinct way in the new Metrocab. This can be illustrated by a comparison of the "prominent grille" and "round headlights flanking the grille" of the Fairway and the new Metrocab:
![]() |
![]() |
![]() |
![]() |
London taxi
, as it was designed to do; but that it does not look like an LTC
taxi
, and in particular either of the Trade Marks. I agree with this. Even so, I would not go so far as to say that there was no similarity at all between the new Metrocab and the Trade Marks. Rather, I would say that there was a low degree of similarity.
taxi
he was getting into was the new TX5.
taxi
services. Although the relatively low degree of attention paid by such consumers and the identity of the respective goods are factors favouring a likelihood of confusion, the low distinctive character of the Trade Marks and the low degree of similarity between the new Metrocab and the Trade Marks outweigh those factors.
Infringement of the Trade Marks under Article 9(1)(c)/Article 5(2)
The law
Assessment
taxis
in future. I am not persuaded of this. Even if either of the Trade Marks had a reputation at the relevant date at all, it was relatively small. Furthermore, it was a reputation in respect of a historic design of
taxi
which had been superseded, particularly in the case of the CTM (which represents the Fairway). As I have said, I consider that the new Metrocab would remind the average consumer of the Trade Marks, while appreciating that it differs from them. In my view the nature of the association which the average consumer would make is simply that all three shapes are species of the genus
London taxi
. That would not be detrimental to the distinctive character of the Trade Marks. Furthermore, there is no evidence of any likelihood of a change in the economic behaviour of the average consumer, whether the average consumer is taken to be the
taxi
driver or the consumer of
taxi
services.
Defence under Article 12(b)/Article 6(1)(b)
Characteristics
London taxi
. LTC does not dispute this.
Honest practices in industrial and commercial matters
taxis
. Given that, and given the nature of the Trade Marks, I consider that it would have been reasonable for the Defendants not to have searched for them.
London taxi
.
Passing off
The law
"The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. Thirdly he must demonstrate that he suffers, or in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
"It is recognised that it is more difficult to acquire a sufficient reputation and goodwill in the shape or get-up of a product. Whilst the principal function of a brand name is to denote origin, the shape and get up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball is an example) does not necessarily, or even normally, conclude that they come from the same source. The claimant must prove that the shape of its goods has come to denote a particular source to the relevant public: see Hodgkinson & Corby Ltd v Wards Mobility Ltd [1994] 1 WLR 1564 at 1573-4. In that case Jacob J asked whether:
'the plaintiffs have proved that the shape of their cushion is the "crucial point of reference" for those who want specifically a ROHO cushion… And have they proved that persons wishing to buy a Roho cushion are likely to be misled into buying a Flo'Tair..?'"
"Before turning to the evidence I would make one general observation. It was the Reverend Wm. Paley who said in Natural Theology (1784), ch. i: 'The watch must have a maker.' In that sense every manufactured article conveys a representation — that it had a maker. Now where an article has a readily distinguishable appearance and there has only been one maker, once the article becomes well-known in the market, consumers when they see an article like that may assume that it is made by the same maker as he who made the articles of that individual appearance which they have seen before. So, in the instant case, almost all those who casually saw the Flo'Tair cushion (or just a picture of it) reacted by saying, 'That is a Roho.' One more precisely said, 'That is a Roho or a convincing copy.' This sort of evidence alone can seldom, if ever, satisfy the legal test for passing off. It does not prove that anyone relies upon the appearance to get the product of the maker they want."
Assessment
taxi
services.
taxis
in addition to sales and use of Fairway and TX1/TXII
taxis
.
TAXI
"" light on the roof; (vi) round headlights flanking the grille; and (vii) a generally rounded body shape. Even assuming that, in principle, a claim to goodwill can be made at this level of abstraction, it seems to me that it necessarily increases LTC's difficulty in establishing that such features denote the source of its
taxis
.
taxi
services perceived these features, at least at this level of abstraction, as denoting that a vehicle was a licensed
London taxi
. I think there is considerable force in this submission. But as counsel for LTC rightly accepted, that is not enough to get LTC home. LTC must go further and establish that these features denote a particular source of
London taxis
. In this regard counsel relied upon the same four factors as he relied upon to establish that the Trade Marks had acquired a distinctive character. For essentially the same reasons as I have given in paragraph 193 above, I do not consider that these factors show that consumers of
taxi
services rely upon these features as denoting the source of LTC's
taxis
.
taxi
services to believe that it comes from the same source as LTC's
taxis
, as opposed to being a licensed
London taxi. Furthermore, for the reasons given in paragraph 148 above, the Defendants did not intend to deceive the public.
Summary of principal conclusions
i) both of the Trade Marks were devoid of inherent distinctive character in relation to goods in Class 12 at the respective dates of application;
ii) neither of the Trade Marks had acquired a distinctive character in respect of goods in Class 12 by the date of the counterclaim;
iii) both of the Trade Marks should be declared invalid in respect of goods in Class 12 on the ground that they consist exclusively of the shape which gives substantial value to the goods;
iv) the CTM should be revoked for non-use in respect of goods in Class 12 with effect from 2 May 2014;
v) the Defendants have not infringed either of the Trade Marks pursuant to Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive;
vi) the Defendants have not infringed either of the Trade Marks pursuant to Article 9(1)(c) of the Regulation and Article 5(2) of the Directive;
vii) the Defendants would if necessary have a defence to the infringement claim under Article 12(b) of the Regulation and Article 6(1)(b) of the Directive; and
viii) the claim for passing off fails.