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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Whirlpool Corporation & Ors v Kenwood Ltd [2008] EWHC 1930 (Ch) (04 August 2008) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2008/1930.html Cite as: [2008] EWHC 1930 (Ch), [2009] ETMR 5, [2009] RPC 2, (2008) 31(9) IPD 31059 |
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CHANCERY DIVISION
COMMUNITY TRADE MARK COURT
INTELLECTUAL PROPERTY
Strand. London. WC2A 2LL |
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B e f o r e :
(Sitting as a Deputy High Court Judge)
____________________
1. WHIRLPOOL CORPORATION(a company existing under the laws of Delaware, United States of America) 2. WHIRLPOOL PROPERTIES INC (a company existing under the laws of Michigan, United States of America) 3. KITCHENAID EUROPA INC. (a company existing under the laws of Delaware, United States of America) |
Claimants |
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| - and - |
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KENWOOD LIMITED |
Defendant |
____________________
(instructed by Lewis Silkin LLP) for the Claimants
Mr. Iain Purvis QC, Mr. Andrew Lykiardopoulos and Ms. Iona Berkeley
(instructed by Dechert LLP) for the Defendant
Hearing dates: 7 to 9 and 12 to 16 May 2008
____________________
Crown Copyright ©
Whirlpool
group of companies. They are
Whirlpool
Corporation
(a Delaware company responsible for manufacturing KitchenAid products under licence from
Whirlpool
Properties Inc); (2)
Whirlpool
Properties Inc. (a Michigan company responsible for the protection and licensing of
Whirlpool
Group intellectual property rights); and (3) KitchenAid Europa Inc. (a Delaware company responsible for sales and marketing of KitchenAid products throughout the EEA). It is generally unnecessary to distinguish between them for the purposes of the claims they have made against the defendant,
Kenwood
Ltd. Except where there is a particular need to be more specific, I shall refer to them collectively as '
Whirlpool'.
I shall refer to the defendant simply as '
Kenwood'.
Whirlpool
is entitled, either on the basis of the rights conferred by registration of Community trade mark number 2, 174, 761 or on the basis of the law relating to passing off, to prevent
Kenwood
from marketing stand mixers having the shape and appearance of its kMix mixer launched in July 2007. No claim was advanced under the provisions of Section 56 of the Trade Marks Act 1994 relating to the protection of well-known marks.
Kenwood
raised a counterclaim for invalidity of the Community trade mark registration upon the premise that there would be invalidity for lack of distinctiveness if there was similarity sufficient to support a finding of infringement. However, this backwards to forwards reasoning disclosed no sustainable basis for declaring the registration invalid under Articles 92(d), 96 and 97(3) of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark ('the CTMK'). First, it apparently conceded that the registration would be valid and infringed by use of a trade mark identical to the registered mark. Second, it apparently conceded that the registration should be presumed valid pending determination of the question of liability for infringement, even though there could be no liability for infringement if the trade mark was invalidly registered. Third, it ran counter to the established principle that the grounds for refusal of registration should be applied independently of the defences that might be available to traders accused of infringement[1].
Whirlpool
rightly regarded the counterclaim as insufficient hence ineffective to displace the presumption of validity under Article 95 CTMR. In the end,
Kenwood
decided not to dispute the validity of the registration in suit.
Whirlpool
is claiming a Community-wide injunction under Articles 94(1) and 98(1) CTMR. There are unresolved issues as to whether those Articles permit or require a Community Trade Mark Court designated under Article 91 CTMR to grant an injunction covering areas of the Community which cannot, on the basis of the evidence before the court, be positively identified as areas in which the defendant's activities would satisfy the requirements for a finding of liability under Article 9 CTMR[2]. It is anticipated that the ECJ will, in the near future, provide guidance on that point.[3] In the meantime I simply record that the evidence before me concentrated on the position in the marketplace in the United Kingdom and to a much lesser extent in France and Germany, with the position elsewhere in the Community being for all practical purposes left unexplained. The second point is that in relation to trading activities extending across national boundaries within the EU, a claim for passing off no less than a claim for trade mark infringement should be resolved by reference to the presumed expectations of the average consumer of the goods or services concerned, who must for that purpose be taken to be reasonably well-informed and reasonably observant and circumspect.[4] This was common ground between the parties at the hearing before me.[5]
Kenwood
to further differentiate the shape and appearance of its kMix mixers from the shape and appearance of
Whirlpool's
KitchenAid Artisan mixers. This is a KitchenAid Artisan mixer:
.png)
.png)
The images are of a mixer in Empire Red, shown achromatically. The mixers are available in a variety of rich colours, the most popular in recent years having been red, almond and white. They are also available in an all-metallic finish. On the evidence before me it is clear that the selection of colour (or an all-metallic finish) is made with care by purchasers buying for domestic use. People buy these mixers for their style and presentation as well as for their functional qualities.
Kenwood
kMix mixer:
.png)
.png)
The images are of a mixer in Raspberry, shown achromatically. The mixers are available in other colours including almond and white.
Whirlpool
that the kMix was actually designed to deceive or mislead people. The suggestion is that there was a miscalculation as to what would be an acceptable design to adopt. I accept that this is a matter that can properly be looked into. On looking into it, I find that the kMix is indeed what it appears to be. It is the means by which
Kenwood
intended to move into the premium price sector of the market occupied by the Artisan mixer and make sales to design conscious consumers as best they could by matching the KitchenAid offer.
Kenwood
undoubtedly had the KitchenAid Artisan mixer in its sights at all material stages of the process leading up to the finalisation of the design of the kMix. Those involved in the process were in varying degrees sensitive about the parallels between the design proposals they were considering and the design of the Artisan mixer. That, in itself, is not sinister. I will, however, say that one of the proposals should have been seen as so clearly inappropriate as to require it to be excluded from consideration without a second thought. I am referring to the proposal which would, if adopted, have led to the kMix having a nose-like attachment hub protruding from the front of the mixer head in the same way as the attachment hub on the mixer head of the Artisan. It also appears to me that there was colour matching, with the red and almond colours used for the kMix being brought up tight against the red and almond of the Artisan. Whilst the
KENWOOD
branding beneath the dial could easily have been larger, I do not regard it as inappropriately small. In my view there was a calculated decision to proceed with the finalised design of the kMix in the sense only that it was thought to be an acceptable design with which to compete head on with the KitchenAid mixer. It was not, on the evidence before me, chosen for that purpose by reason of any anticipated propensity to deceive or mislead.
.png)
.png)
At this point, it is relevant to recall that the graphic representation of a mark should be clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective.[6] This gives effect to the requirement for legal certainty. The graphic representation is expected to be definitive as to the identity of the protected mark, with that being taken to consist only of the particular features which have actually been recorded in the register.[7]
Representation of the mark
(1) If the applicant does not wish to claim any special graphic feature or colour, the mark shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application. ...
(2) In cases other than those referred to in paragraph 1 and save where the application is filed by electronic means, the mark shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears.
(3) In cases to which paragraph 2 applies, the application shall contain an indication to that effect. The application may contain a description of the mark.
(4) Where registration of a three-dimensional mark is applied for, the application shall contain an indication to that effect. The representation shall consist of a photographic reproduction or a graphic representation of the mark. The representation may contain up to six different perspectives of the mark.
(5) Where registration in colour is applied for, the representation of the mark under paragraph 2 shall consist of the colour reproduction of the mark. The colours making up the mark shall also be indicated in words and a reference to a recognized colour code may be added.
(6) ...
23. ...it is settled case-law that the distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No. 40/94, must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly by reference to the perception of them by the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (see Joined Cases C-456/01P and C-457/01P Henkel v. OHIM [2004] ECR1-5089, paragraph 35, and Case C-173/04P Deutsche SiSi-Werke v. OHIM [2006] ECRI-551, paragraph 25).
24. According to equally established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see Henkel v. OHIM, paragraph 38, Case C-136/02P Mag Instrument v. OHIM [2004]ECR I-9165, paragraph 30, and Deutsche SiSi-Werke v. OHIM, paragraph 27).
25. None the less, for the purpose of applying those criteria, the relevant public's perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the products it denotes. 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 distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, in particular, Henkel v. OHIM, paragraph 38, Mag Instrument v. OHIM, paragraph 30, and Deutsche SiSi-Werke v. OHIM, paragraph 28).
26. 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, Henkel v. OHIM, paragraph 39, Mag Instrument v. OHIM, paragraph 31, Deutsche SiSi-Werke v. OHIM, Paragraph 31).
Whirlpool
Properties Inc applied under number 1,331,685 to register the following three-dimensional shape as a Community trade mark for 'electric beating and mixing machines and attachments for such machines' in Class 7:
.png)
The examiner objected to registration under Article 7(1)(b) on the basis that the shape as a whole was devoid of any distinctive character for goods of the kind specified. The applicant tried, but failed to persuade the examiner that the objection should be waived. On 12 January 2001, the Office issued a decision formally refusing the application. The applicant did not appeal. Nor did it file a fresh application with a view to securing registration under Article 7(3) CTMR.
57. ... the Court has ruled, in Case C-353/03 Nestlé [2005] ECR I-6135, that a mark may acquire distinctive character within the meaning of Article 3(3) 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.l) in consequence of use of that mark in conjunction with a registered trade mark.
58. The same is true in relation to distinctive character acquired through use for the purposes of Article 7(3) of Regulation No 40/94, since that provision and Article 3(3) of Directive 84/104 are essentially identical.
59. Therefore, a three-dimensional mark may in certain circumstances acquire distinctive character through use even if it is used in conjunction with a word mark or a figurative mark. Such is the case where the mark consists of the shape of the product or its packaging and where they systematically bear a word mark under which they are marketed.
61. Furthermore, in regard to acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark (Case C-299/99 Philips [2002] ECR I-5475, paragraph 64, and Nestlé, paragraph 26). The expression 'use of the mark as a trade mark' must therefore be understood as referring to use of the mark for the purposes of the identification by the relevant class of persons of the product or service as originating from a given undertaking {Nestlé, paragraph 29).
62. Therefore, not every use of the mark ... amounts necessarily to use as a mark.
The purpose of this Communication is to explain the practice of the Office in examining applications for registration of three-dimensional marks.
1. In accordance with Rule 3(4) of the Implementing Regulation, applicants applying for registration of three-dimensional marks must make a corresponding indication in the application. The application form prepared by the Office provides a box that is to be checked in these cases. In addition a representation of the mark must be supplied. The representation in photographic or graphic form may contain up to six different perspectives of the mark.
When the application does not contain a corresponding indication and when it is not clear from the circumstances that registration of a three-dimensional mark is requested, the Office will treat the application as a request for a two-dimensional "figurative mark". ...
2. Three-dimensional marks may, in addition to the three-dimensional shape itself, also contain verbal or figurative elements applied to that shape.
3. An application requesting registration of a three-dimensional mark may also claim colour at the same time, by making a corresponding indication to that effect, as is provided for in Rule 3(5) of the Implementing Regulation. In these cases, the colours making up the mark must be indicated. The representation must also be in colour.
4. Pursuant to Rule 3(3) of the Implementing Regulation, the applicant, when requesting registration of a three-dimensional mark, may also provide a description of the mark. Such a description is not mandatory but may be useful because it may permit the Office to determine the nature of the mark. The Office will object to a description only if it obviously is at variance with the representation of the mark.
5. In examining three-dimensional marks for absolute grounds of refusal, primarily the provisions of Article 7(1)(b), (c), (d) and (e) of the Community Trade Mark Regulation are involved. Under these provisions, a mark may only be refused if it consists exclusively of one of the elements referred to in these provisions and the ground of refusal exists in relation to the goods or services for which registration is requested.
Accordingly, the Office will reject, on one or several of the grounds referred to above, three-dimensional marks consisting exclusively of standard or ordinary containers (bottles, boxes, etc.) or the standard or usual shape of the goods for which registration is sought. Where the three-dimensional mark contains other elements (verbal or figurative elements or colour) and when these other elements alone or in combination with the three-dimensional shape are sufficient to render the mark registrable, the Office will not refuse registration.
As in cases of word marks and figurative marks consisting of several elements, some or all of which by themselves would not be registrable, the Office, when accepting such combination three-dimensional marks, will not point out to the applicant, or to the public when publishing the mark, the basis for accepting the application.
Consequently, when such combination three-dimensional marks are published or registered, this cannot be taken as an indication that the Office would have accepted the three-dimensional shape itself as registrable.
Where the trade mark contains an element which is not distinctive, and where the inclusion of said element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the Community trade mark, as the case may be.
The disclaimer would serve to ensure that the rights conferred by registration were taken to reside in the combination of elements and not in the shape alone, thus aligning the scope of protection with the logic of the decision to allow registration upon the basis that the 'other elements alone or in combination with the three-dimensional shape are sufficient to render the mark registrable'. The power to require a disclaimer under Article 38(2) is exercisable by the Office and not, so far as I can see, by the Community Trade Mark Courts designated under Article 91 CTMR. That reinforces me in the view that the aims and objectives of Article 38(2) should be achieved via the 'stringent and full' examination for registrability which the Office is required to undertake.
Whirlpool
Properties Inc took advantage of the opportunity to apply for registration under the procedure prescribed by Communication No. 2/98. The relevant application was filed on 14 March 2003. The three-dimensional mark shown in paragraph 8 above was put forward for registration in respect of 'electric beating and mixing machines and attachments for such machines' in Class 7. Although the word KitchenAid appeared in small lettering in the graphic representation filed by the applicant under Rule 3(4) of the Implementing Regulation, the examiner did not see it in the scanned version captured for inclusion in the register. It might have been thought that the illegibility of the word KitchenAid in the scanned image would prevent implementation of the abbreviated examination procedure. Not so. The applicant's professional representatives wrote to the examiner invoking the procedure in the following terms:
Further to your telephone conversation with Ramón Cañizares of our Alicante office, we wish to stress that the subject trademark application includes the term KitchenAid as a word element, the presence of which you were unable to see.
From the paper copy of the application that you have on file, you will be able to verify that the mark sought does indeed include the word KitchenAid.
Please keep in mind that this word element is particularly important given that it constitutes the subject of several Community trademark registrations, including Nos. 000095778 and 001159276.
We therefore assume that this indication should allow the examination for absolute grounds to take place on an expedited basis and the application to proceed immediately.
The examiner evidently agreed that the word KitchenAid did not need to be clearly legible in the scanned image that was supposed to define the identity of the mark as registered. She appreciated that the word element had been omitted from the official record of the application because 'due to the size of the word in relation to the rest of the mark, the word became illegible when it was scanned into our electronic system '. Even so, she proposed only that a verbal description be added under Rule 3(3) of the Implementing Regulation. Her suggested wording was:
The mark consists of an electric beating and mixing machine on which the word KitchenAid appears.
The applicant then inserted additional wording into the suggested description so as to make it read as follows:
The mark consists of a fanciful electric beating and mixing machine configuration upon which the word KitchenAid appears (my emphasis).
The examiner accepted the applicant's wording and it became part of the registration of Community trade mark number 2,174,761.
(1) functions as a trade mark for mixers embodying that shape, even without assistance from the word element KitchenAid; or
(2) only functions as a trade mark for mixers embodying that shape with assistance from the word element KitchenAid[25]; or
(3) does not function as a trade mark for mixers embodying that shape, even with assistance from the word element KitchenAid.
In making that assessment, it is appropriate to take account of the guidance I have referred to in paragraphs 11 to 14 and 16 to 18 above. The fact that the bodywork of the KitchenAid Artisan has been registered as a three-dimensional trade mark at the national level in other Member States[26] underlines the need for such assessment in the present proceedings. The question whether and, if so, how far it can be maintained that the bodywork of the graphically represented shape performs an independent distinctive role[27] in the context of the registered trade mark as a whole is a question of fact. There is nothing, in point of law, to prevent a finding that there are two marks (one verbal, the other non-verbal) in the same field of view where that accords with the reality of the case.[28] The willingness and ability of the relevant public to rely on the shape in question as a means of source identification may, of course, increase or decrease across the Community or in different parts of it as trading activities expand or contract and competing products come and go.
.png)
.png)
The only organisations which have a significant share of the market in the United Kingdom are
Kenwood
and
Whirlpool.
HREF='#note30'>[30] Even so, I think it is appropriate to keep these mixer shapes in mind when considering issues of distinctiveness and similarity, both in relation to the bodywork of the unitary mixer head and stand recorded in the Community-wide trade mark registration and in relation to the finished appearance of the Artisan mixer.
Corporation
in 1980.
Whirlpool
acquired the business from Dart and Kraft
Corporation
in 1985. The 'New Model K' has been known by a number of different names over the years. It has been called the Artisan since about 2004. It is one of a number of products in the Artisan range of KitchenAid appliances marketed by
Whirlpool.
Whirlpool
is not now in a position to bring forward hard evidence of sales prior to 1994. In 1994, approximately 16,000 units of what is now called the Artisan mixer were sold in the European market. The figure for 2007 was about 99,000 units. The figures for sales and sales revenues covering the period 1994 to 1998[34] in 15 EU countries confirm that Germany, France and the United Kingdom were the principal markets for the mixer, followed by Italy, the Netherlands, Austria and Belgium. In recent years the gross revenues from sales of the mixer in the European market have been €33 million (2004), €39 million (2005) and €41 million (2006) with approximately €6 million, €7 million and €8 million being derived from sales in the United Kingdom in each of those years respectively. Over the same period, advertising and marketing spend for the KitchenAid brand in the EU has been at the levels of €1 million (2004), €2 million (2005) and €2 million plus (2006) with about 95% of that expenditure relating to advertising and marketing of the KitchenAid Artisan mixer. I understand it to be accepted on a rough and ready basis that the relative positions of
Kenwood
and
Whirlpool
in the stand mixer market from 2004 to 2006 were as follows:
Kenwood | KitchenAid | KitchenAid | KitchenAid | |
| Value % | Units % | Value % | Units % | |
| 2004 | 68 | 70 | 31 | 29 |
| 2005 | 64 | 70 | 34 | 25 |
| 2006 | 61 | 75 | 38 | 25 |
Whirlpool's
promotional efforts resulted in good levels of public awareness among such consumers in the United Kingdom (and, I would accept, in France and Germany). Photographic images displaying the finished appearance of the Artisan are ubiquitous in the editorial and other printed materials I have seen.
Whirlpool
has used emblematic representations of the shape of the Artisan mixer on consumer facing items such as stickers, stamps, badges, envelopes, folders, brochures, packaging and bags[35]. These are examples of the kind of representations that have been used:
.png)
Whirlpool
has had feedback from market research identifying the aspects of the appearance of the Artisan that impinge on the recollections of consumers.[37] However, I have not seen any documentary records of the information obtained. From the research work I have seen[38] it is evident that a liking for the design of the mixer is a major factor in the appeal of the product. In the overview of perceptions found in research carried out for
Kenwood
in England and France in 2004 it is noted that 'Kitchen Aid consumers love the design of their machine. They view it as a statement of them and their stylish, discerning lifestyle. A piece of equipment to show off.[39]
Whirlpool
for the purposes of the present proceedings. They addressed the issue of distinctiveness as an aspect of perception linked to the issue of similarity. Interviewees were shown one or other of four flashcards (each of which carried a photograph of a kMix mixer) and asked to respond to the questions set out in an associated questionnaire. Responses which imported a reference to KitchenAid mixers were reviewed for significance in terms of their tendency to indicate that the shape and appearance of the kMix so closely resembled the shape and appearance of the Artisan mixer as to make them not only similar, but distinctively similar products from the consumer's point of view. It was envisaged that questions referring to the kMix product shown in the flashcard photograph would yield answers referring to the KitchenAid product from which inferences could be drawn both as to the existence of distinctiveness (in the trade mark sense of the word) and as to the existence of overclose resemblance between the two products. Interviewees whose responses appeared to be supportive of
Whirlpool's
case were identified as persons who might be worth inviting to participate, if they were willing, in a more comprehensive interview. Then, as a result of further selection, some of them were asked to provide witness statements for use at trial.
Whirlpool's
legal advisers. Litigation privilege was claimed for that aspect of their work on the preparation of the claimants' case. The process as a whole was referred to as a 'witness gathering exercise'. Factual information as to the conduct of the exercise and the results obtained was provided by way of witness statements and disclosure. No attempt was made to attach statistical significance either to the results of the exercise as a whole or to the evidence of the 23 interviewees who provided witness statements. The questionnaires containing the responses of those interviewees were exhibited to their witness statements. Other questionnaires were included in the trial bundles at the instigation of the parties or at my request. However, the great majority of the 660 questionnaires were not in evidence at the trial.
One theoretical possibility, in a case like the present, would be for a party to call such of the 1200 respondents to the Roy Morgan survey as were contactable. This course would have the advantage of providing a fairly selected group of witnesses, subject to any distortion which might be caused by difficulties in locating respondents. But it would add enormously to the cost and duration of a trial.
The second possibility would be for a party to call evidence from a lesser number of selected witnesses. This course was taken in Ritz. The plaintiff there called 152 members of the public. The majority of these witnesses were stopped in a public place by a representative of the plaintiff and questioned as to the significance to them of the word 'Ritz'. It seems that those who gave answers favourable to the plaintiff's case were asked to give evidence. Those who did not, were not. As a result, the evidence of these persons was of negligible value. All that it established was that, with the expenditure of sufficient effort and money, 152 people could be found somewhere in Australia who claimed to associate the word 'Ritz' with the plaintiff. The 152 witnesses were not a fair sample of the general public; so that, as McLelland J noted (NSWLR at 215) there was 'no ground in the evidence for any extrapolation on a statistical basis, or on the basis of any mathematical or logical probability, of the views of the "public" witnesses (or any selection from them) as representing the views of the relevant class of the Australian public or a significant section of that class'. The plaintiff was not even willing to reveal the total number of persons interviewed; for all the judge knew, the persons who associated the word 'Ritz' with the plaintiff may have been a tiny minority. The tender of such partisanly selected evidence was an absurdity.
Nor, it seems to me in view of the incorrect premises upon which the poll was conducted as I have indicated, can one safely place any reliance upon the affidavits subsequently obtained by the plaintiff from the respondents. They are respondents who were subjected to an unsatisfactory poll and asked questions at the poll upon false premises and those are matters which plainly affected their minds by the time they came to swear their affidavits. In the circumstances, I would not myself be prepared to rely upon those affidavits at all. The result in my view is that the plaintiff has produced no evidence in this court of confusion or misrepresentation.
The evidence given by survey respondents should normally be evaluated in the context of the 'witness collection exercise' (including the questionnaire survey) as a whole. That is, indeed, the reason why the agreed directions for the conduct of the present proceedings provided for full disclosure of information in that connection.[45]
.png)
The cards were quite small, in each case no larger than 9.5 centimetres x 9.5 centimetres. In Flashcard 1 the kMix is shown with the trade mark
KENWOOD
visible beneath the dial. In Flashcards 2 and 3 it is shown from the opposite side, on which there is no
KENWOOD
trade mark. In Flashcard 4, the trade mark
KENWOOD
can just about be seen beneath the dial. Flashcard 4 was shown to 13 of the 23 interviewees who provided witness statements. Of the remaining 10 who provided witness statements, 4 were shown Flashcard 2 and 6 were shown Flashcard 3.
Ql. Please look at this card.
[GIVE THE CARD TO THE INTERVIEWEE AND ALLOW THEM TO LOOK AT THE CARD FOR AS LONG AS THEY WISH. MAKE SURE THEY HOLD THE CARD THROUGHOUT THE INTERVIEW]
What can you tell me about this product?
[POINT TO THE MIXER ON THE CARD]
[IF THEY HAVE NO RESPONSE AT ALL OR DO NOT UNDERSTAND THE QUESTION, THEN GO TO QUESTION 1(A), OTHERWISE GO TO QUESTION 2]
Ql(a). What do you think of it?
Q2. Anything else?
[IF THEY MENTION OUR CLIENT IN ANY WAY, THEN GO TO QUESTION 3, OTHERWISE GO TO QUSTION 4]
Q3. Why do you say that?
Q4. Would you mind if I made a note of your occupation and age band?
The answers elicited by these questions were likely to be inconclusive for a number of reasons. Interviewees were invited to talk 'about this product' from a perspective of their own choosing. References to shape and appearance from a trade mark point of view would be random occurrences. There was a risk that the first question would be taken to imply that 'this product' was one which the interviewee was able from experience to 'tell me about', thus nudging interviewees into thinking and speaking of it as a product that was known rather than unknown to them. Interviewees were not asked to indicate whether they were to any degree familiar with either the shape and appearance of the kMix or the shape and appearance of the Artisan. No relevant trends or patterns could be identified in the answers provided by the different respondents without that information.
Whirlpool
tendered witness statements from 10 of the 623 interviewees who had been shown one or other of the two flashcards. These witness statements were in each case provided following a second stage interview at the London offices of
Whirlpool's
solicitors.
Kenwood
not KitchenAid mixers. She had been conscious of the differences between them, although she saw them as mixers of a generally similar shape. The debranded KitchenAid mixer was, as a result of her familiarity with it through use, instantly recognisable to her by its shape. She thought that if she had seen the kMix on sale in a shopping environment, the shape of it would have aroused her curiosity and made her want to find out what brand it was.
Kenwood
not KitchenAid mixers.
Kenwood
not KitchenAid mixers. On that occasion she was concentrating on the shape of the products that were shown to her. She thought she was engaged in the assessment of a prototype for a new model from a design point of view and was not thinking about things from a brand point of view. Because she had a KitchenAid mixer at home, she recognised the debranded Artisan by its appearance as soon as it was shown to her.
Ql. Please look at this card.
[GIVE THE CARD TO THE INTERVIEWEE AND ALLOW THEM TO LOOK AT THE CARD FOR AS LONG AS THEY WISH. MAKE SURE THEY HOLD THE CARD THROUGHOUT THE INTERVIEW]
What can you tell me about this product?
[POINT TO THE MIXER ON THE CARD]
[IF THEY HAVE NO RESPONSE AT ALL OR DO NOT UNDERSTAND THE QUESTION, THEN GO TO QUESTION 1(A), OTHERWISE GO TO QUESTION 2]
Ql(a). What do you think of it?
Q2. Anything else?
[IF THEY MENTION OUR CLIENT IN ANY WAY, THEN GO TO QUESTION 3, OTHERWISE GO TO QUESTION 4]
Q3. Why do you say that?
Q4. Does the shape tell you anything about the product?
Q5. Would you mind if I made a note of your occupation and age band?
Question 4 added significantly to the questions that had been asked in the course of the survey work carried out with Flashcards 2 and 3.
Whirlpool's
solicitors on 21 and 22 November 2007. At the outset, they were shown Flashcard 4 and asked the questions set out in paragraph 45 above. Their completed questionnaires were then taken through to another room for assessment by one or more of the legal team acting for
Whirlpool.
That resulted in 13 of the 26 interviewees being selected for participation in the third stage of the process and elimination of the remainder from further consideration.
TABLE A
| Interviewee | Questions 1 and 1(a) | Questions 2 and 3 | Question 4 |
| Judith Bentley Age band 56-65. Interviewed on 21 November 2007. Kitchen Aid owner. No WS. |
It's a Kenwood.I know it's not a Kitchen Aid. I haven't seen any two-tone Kenwoods. I wouldn't buy anything with a coloured top. It has to match your kitchen. |
It's fairly sleek and modern. Can't tell much else, about the speeds for example. | |
| Janine Blair Age band 46-55. Interviewed on 21 November 2007. Not Kitchen Aid owner. No WS. |
It's a food mixer. Holds big capacity. Like that it's stainless steel. Like the red and stainless steel. I like that it has one little dial. Doesn't look overly bulky like some of them. If that is a handle (points to handle) that is useful. | Neat and tidy and compact. Like the colouring. |
|
| Sue Dundas Age band 56-65. Interviewed on 21 November 2007. Not Kitchen Aid owner. No WS. |
Food processor. Looks quite hi-tech and industrial. Looks quite robust. I like the look of it. Like the shape and design of the bowl. Looks easy to use. It's a stylish and simple design. Therefore uncomplicated to use and [...]. |
I wonder if it comes in any other colours. Black or chrome. | It looks like it could be used for large quantities. Not a liquidiser as I can't see the top. Looks like a sturdier version of what I use already. I haven't seen this anywhere before. I have a Robo Chef and a hand blender. I would use this for bread making and dough [...]. |
| Maxine Gordon Age band 35-45. Interviewed on 21 November 2007. Not Kitchen Aid owner. No WS. |
It's obviously a food mixer. Can't tell who it is by. I like the colour. Nice big bowl. Multi-purpose. Good for baking. | Not really. Looks like it's got a few speeds. Easy to wash. | The shape tells me it's a well designed and compact product. Looks like it can do a lot which makes it appealing. Looks like the head hinges back which is good for not disrupting what you are doing. |
| Julia Hickman Age band 56-65. Interviewed on 21 November 2007. Kitchen Aid owner. No WS. |
Looks nice and smart. Personally wouldn't buy it in red but that's very personal. | No, I can (sic) see how it works but looks very smart. | Very pleasing and lovely. Not sure about the very, very shiny bowl. |
| Nina Leach Age band 36-45. Interviewed on 21 November 2007. Kitchen Aid owner. No WS. |
It is a mixer. I was going to say like a Kitchen Aid but it's not. More modern as opposed to a traditional one. | Practically, how would you lift up the top? It's a variation on a theme because the Kitchen Aid is the style of mixer I chose because of how it looked. Do Kenwood have one too? If I was looking at this next to the one I bought (KA) I would still have mine. I don't know what make this product is. |
I would say again it's modern and the matt silver is modern. It doesn't work for me due to the colour. Would look nice in a minimal kitchen. Looks about the same size as other food processors. |
| Alice Parsons Age band [—]. Interviewed on 22 November 2007. Not Kitchen Aid owner. No WS. |
Is it a Kenwood? Looking into Kenwoods. Veryreliable. Can't tell whether it looks old or new. Quite retro very 70's. |
Like the look of it. Saw the 'K' on side and could make out the ' Kenwood' onside. Looking at different brands on John Lewis website. |
Don't know if it particular to Kenwood. Seensomething similar. If it wasn't for the 'K' and the ' Kenwood'she wouldn't know itwas another brand. |
| Nina Patel Age band 26-35. Interviewed on 21 November 2007. Not Kitchen Aid owner. No WS. |
Looks nice, obviously a food mixer, nice big bowl. Is it Kenwood?I think it's a Kenwood. Nice ifthere were other colours. |
Don't like matt silver. Stainless steel is harder to clean. |
I know it's a food mixer straightaway. Different settings. Probably could mix quite a lot. |
| Sandra Polimis Age band [—]. Interviewed on 22 November 2007. Not Kitchen Aid owner. No WS. |
It looks very much like a Kenwood apart from the colouring.High quality one because of the stainless steel bowl. |
Because my Mum has a Kenwood one. |
If I was looking for a mixer I would be put off by the rounded top and the red. |
| Lis Steedon Age band 56-65. Interviewed on 22 November 2007. Kitchen Aid owner. No WS. |
Quite funky. Colours are becoming the essence of food processors these days. Like chrome bowl and matt chrome stand. I've got an apple green Kitchen Aid. |
Presumably it would be made in other colours and chrome. Is it a Kenwood -yes it is. Because I can see the logo on the side. It is because it is going forward to be a more rounded model which would be the next step -they have to renew themselves to follow the market trend. |
Kenwood a reliablemachine. Kitchen Aid is more retro and more funky - slightly less bulky. |
Kenwood a reliablemachine. Kitchen Aid is more retro and more funky - slightly less bulky. |
Kenwood a reliablemachine. Kitchen Aid is more retro and more funky - slightly less bulky. |
Kenwood a reliablemachine. Kitchen Aid is more retro and more funky - slightly less bulky. |
|
| Julie Thelwell Age band [—]. Interviewed on 22 November 2007. Not Kitchen Aid owner. No WS. |
Looks like a coffee machine/maker. Like the size of it - nice and compact. |
Like the colours. Like style - smooth lines - like shape (ladies shape). |
Doesn't tell you outright what it is. Can't see what is inside the big bowl. |
| Carolyn Tinning Age band [—]. Interviewed on 22 November 2007. Not Kitchen Aid owner. No WS. |
It's a food mixer. It is a food blender and/or chopper. | Looks expensive. Might come in other colours. | Not really - has a handle on it. |
| Astrid Weiner Age band [—]. Interviewed on 22 November 2007. Not Kitchen Aid owner. No WS. |
Very up to date one -seen these quite recently. Don't use them any more. It was one of the big names. Can't remember what it was. It's fantastic. Used to have a Kenwood or Braun. |
Not particularly. |
TABLE B
| Interviewee | Questions 1 and 1(a) | Questions 2 and 3 | Question 4 |
| Anne Banks Age band 36-45. Interviewed on 21 November 2007. Kitchen Aid owner. WS C6/Tab21 |
I like it. Modern like the shine and the look of it. I want it. I like the colour red. I've got one in yellow. Isn't this ... ? This says Kenwood but it looks like a Kitchen Aid. Is it a Kenwood? | There is a K on it so it must be a Kenwood. Dial is not like a Kitchen Aid. The bowl looks like Kitchen Aid and the top looks like a Kitchen Aid. My first impression was definitely it looked like a Kitchen Aid. |
My first impression was that it was a Kitchen Aid product, but then I looked closely at the dial. I wouldn't say it looks like a Kenwood. |
| Mary Bell Age band 56-65. Interviewed on 21 November 2007. Kitchen Aid owner. WS C6A/Tab37. |
It looks like a Kitchen Aid food mixer, but it's different from the one I have. Several differences. The colour, the controls, not as stylish as the one I have. |
I don't like the two tone colour. It looks rather flimsy because of the two tone colour. Well, in particular it has the same sort of design, but there are differences (colour/control). |
It seems to be a copy of a Kitchen Aid. |
| Laura Dubois Age band [—] Interviewed on 22 November 2007. Not Kitchen Aid owner. WS C6A/Tab43. |
Similar to the one I wanted. Like the retro look and the colour red. Looked at one from Kitchen Aid because it was red and I like all red and design because it is retro. | The fact that is [—] does not bother her -she likes that. | Because it's big it will not move about. Sort of mixer you would find in a professional kitchen. |
| Clare Flatman Age band 46-55. Interviewed on 22 November 2007. Kitchen Aid owner. WS C6/Tab 11. |
It's a mixer. See by quality that it's a good quality one. Is it 'Krups' or maybe ' Kenwood'? Like the colours but not sure about the silver casing. |
The one I've got is similar shape. I can tell by round curves. Mine is all enamel -it's more classic design - the one in the picture is more modern. Because I can see 'K' on the mixing bowl and underneath the dial it looks like ' Kenwood'. | By the shape you can tell you can add accessories/attachments. |
| Sara Gronmark Age band 46-55. Interviewed on 21 November 2007. Kitchen Aid owner. WS C6A/Tab29. |
Nice and solid. Big bowl. Like the handle, knob looks easy to use. I assume it has instructions on it. I like the rounded curve but don't like the colour combination. | Looks quite expensive. I'm assuming the K means Kitchen Aid or Kenwood. Kitchen Aid probably. Looks heavy, which is good. I have bought a Kitchen Aid recently and they have very similar bowls. Kenwood is an English make but this looks too sturdy as Kitchen Aid is at the top end of the market. |
Curves invite you to handle it. I imagine the top hinges back. It would feel good to do that. Bowl would [—] into place. Not many settings. |
| Sarah Hershman Age band [—] Interviewed on 22 November 2007. Not Kitchen Aid owner. WS C6/Tab 17. |
Retro mixer. Not very attractive. Only got one function. | Quite American looking. | Like a Kenwood mixer for making cakes. |
| Jennifer Johannes Age band [—] Interviewed on 22 November 2007. Kitchen Aid owner. WS C6A/Tab47. |
It's a table top mixer. It's not the one I've got - can't remember the name of the one I've got. It's got a K on it - does that mean it's a Kenwood? I don't know. Difficult to know unless you use it. Nice and bright. Handle on the side which I like. |
Looks quite easy to clean. The one I've got has a lever on the side to release it. | Very solid. Good for commercial use. |
| Joanne Langston Age band 36-45. Interviewed on 21 November 2007. Not Kitchen Aid owner. WS C6A/Tab27. |
Looks very stylish and modern. Hopefully will be receiving. Something I will be getting for Christmas. Looks like the same shape as Nigella Lawson uses. That is the one I want. Very posh, nice. Is it Kenwood? It is Kenwood. It is similar to the one I'm after. It's a Kenwood though. |
It's nice but not in that colour (red with silver) especially the colour and type. | Not really. Bowl is large which attracted me to the one I've seen. Looks like it would be easy to use as it has one dial on the side. Different speeds. |
| Vicky Leffman Age band [—] Interviewed on 22 November 2007. Kitchen Aid owner. WS C6/Tab9. |
It's a mixer. Hybrid between a Kitchen Aid and a Kenwood. Don't like colours.Bowl looks good as it looks quite big. |
Not really no. | |
| Vanessa O'Donnell Age band 26-35. Interviewed on 21 November 2007. Kitchen Aid owner. WS C6A/Tab31. |
It's a Kenwood. It's got a big K on it. Looks like it's trying to be a Kitchen Aid in disguise. Bottom looks plastic (more like a Kenwood). The top looks like a sturdy Kitchen Aid. Bowl looks good. Simple controls. Is the front circle for attachments? |
Lifts up presumably. Not overly impressed, but that may not be the point! My immediate reaction was 'Is that a new KitchenAid?' From the look of it it looks like a Kitchen Aid. But now I can see it says Kenwood on the side. Looks like two machines as one. |
The shape makes me think that it's more like a classic KitchenAid. Especially the rounded/heavy top. Kenwood's one more square than this traditionally. Looks very top heavy which would suggest it had a good motor on it. Interesting to know how it lifts. |
| Pamela Stoker Age band 36-45. Interviewed on 21 November 2007. Kitchen Aid owner. WS C6/Tab 15. |
It's a food mixer. It's very modern looking. Looks expensive. | It's a similar shape to my Kitchen Aid. It's a hands free mixer. Just the shape of it. It looks the same in the way you would lift the top up to change the bowl. It seems the obvious shape for a mixer. | |
| Victoria Wells Age band 26-35. Interviewed on 21 November 2007. Kitchen Aid owner. WS C6/Tab23. |
Industrial looking. Not as elegant as the other version, compared to the classic KitchenAid model. The Kitchen Aid goes in a lot more kitchens. | Don't like the two tone. Because I own the Kitchen Aid and I like the design. There are others on the market that are cheaper. | Looks very similar to the Kitchen Aid I've got. I like the sturdiness. Looks slightly less sturdy than a Kitchen Aid. |
| Tracy Wilson Age band [—] Interviewed on 22 November 2007. Kitchen Aid owner. WS C6/Tab3 |
It's a food mixer. I think it's a Kenwood one. Quite similar to the one I have at home - I have a black top not a red top. |
I recognise the logo as I have a Kenwood toaster. I bought a mixer a few months ago. Spend quite a bit of money - so did research. It's a Kitchen Aid Artisan from John Lewis. |
Shape tells me it's a food mixer - same shape as the one I own - very similar. |
Kenwood
mixer because she could see there was a K on the bowl. The lettering under the dial led her to think it was a
Kenwood.
She immediately recognised the debranded Artisan as a KitchenAid mixer by its shape, the front attachment hub and the silver bowl. She thought she was being asked to comment in relation to the look and style of the kMix. In her witness statement she said that on seeing all the mixers together she thought they looked very similar, but 'when side-by-side I think you can see they are different mixers from different sources'.
Kenwood
Chef. If she were to buy a new mixer she would buy a KitchenAid. She thought that she was being asked to compare the looks and styles and similarities of the different mixers shown to her at the solicitor's offices. In her witness statement she said that she 'thought the
Kenwoods
were trying to look like KitchenAids'. In her oral evidence she confirmed that she was commenting on the design aspects of the machines and looking for branding to work out why they looked so similar. She thought the shape, the head and the bowl made the KitchenAid machine very distinctive looking and 'if you walk into a store, you automatically know which one it is'. Her expectation was that the similarities between the kMix and the KitchenAid would make her want to compare them if she was looking for that style of mixer.
Kenwood
when she looked more closely. She thought when responding to the questionnaire that she was engaged in market research about a new product design. She confirmed that she had not thought and would not have thought of the kMix as an updated version of the KitchenAid once she had seen it identified as a
Kenwood.
Beyond that, she thought 'the fact the kMix looks like the KitchenAid would make me more likely to buy it'. In her witness statement she confirmed that when she was shown the debranded Artisan she immediately recognised it as a KitchenAid mixer. 'The shape is very recognisable, quirky, it looks really old, like a 1930s mixer. It has also got a very distinctive strong chrome bowl, although there wasn't one in the one I was shown. It has become quite fashionable and works well'.
Kenwood.
When she saw the debranded Artisan she immediately recognised it by its appearance as a KitchenAid mixer. She was clear in her own mind that the kMix mixers she was shown were
Kenwood
products. Her perception was that the kMix was a
Kenwood
that looked like a KitchenAid. She thought that in the absence of positive identification of it as a
Kenwood,
she would have regarded it as a revamped version of the KitchenAid.
Whirlpool.
He was not involved in the conduct of the case. He was, however, aware that his firm was acting for
Whirlpool
in a contentious matter relating to a new
Kenwood
stand mixer and from time to time he had lunch with the trade mark advisers in his firm who were working on that matter. He had seen various mixers in boxes in their office and other offices, but did not know which side his firm was acting for and did not know that the KitchenAid mixer was a
Whirlpool
product. He knew what the KitchenAid mixer looked like, having previously seen examples on display in stores such as John Lewis. He was impressed by them and wanted to own one. At lunchtime on or about 6 September 2007 he dropped into the office used by his trade mark colleagues. He caught sight of an example of Flashcard 1, picked it up, looked at it and said: 'Doesn't it look great. I would love to have one of those appliances in the kitchen'. He was then told No, that is the opposition, the kMix'. It was a very brief conversation. He did not study the photograph on the flashcard 'forensically' for the purpose of determining the identity of the product it depicted. I think the photograph was merely the stimulus for a passing remark about his fondness for KitchenAid mixers. The remark was too casual and there were too many special situational factors affecting his thought processes for me to be able to attach significance to this incident in the broader context of the issues I have to decide.
Whirlpool
for the purposes of the present proceedings. They are partners in a consultancy specialising in branding in the field of hotels, tourism and real estate linked to hotels and tourism. In January 2008 Mr. Hutchison met Mr. Schmidt in London to discuss a hotel related business venture. The meeting took place in the lounge area of the Ferndale Hotel. Mr. Schmidt was already there when Mr. Hutchison arrived. He (Mr. Schmidt) had a number of files on the table in front of him. He said he was 'working on the KitchenAid project'. Mr. Hutchison was aware, as a result of a discussion on a previous occasion, that this referred to his work as an expert witness for the makers of the KitchenAid mixer.
Kenwood
kMix'. Mr. Hutchison looked across the table and said as he pointed to the KitchenAid 'I have got one of those'. Mr. Schmidt then drew his attention to the other image in the photograph by a question along the lines of 'Have you seen this?' at which point Mr. Hutchison's comment in relation to the kMix was something along the lines of 'My God, what have KitchenAid done'. By that time he was holding the photograph. In his witness statement he said that he looked hard at the images. In his oral evidence he said that he looked at them very carefully. He nonetheless maintained that he did so without noticing either the
KENWOOD
trade mark on the front of the kMix or the caption '
Kenwood
kMix' above the image he was looking at and therefore without realising that it was a
Kenwood
mixer until that was pointed out to him. I think his obliviousness to the positive identification of the kMix as a
Kenwood
mixer is significant and all the more so in circumstances where
KENWOOD
is a brand that was known to him and he actually had a
Kenwood
mixer in the kitchen of his apartment in Johannesburg. It appears to me that he was actively correlating the design of the kMix with that of the KitchenAid as a direct result of the context and manner in which the photographic images were put to him. I am not willing to regard that as a relevant mindset for the purposes of the assessment I am required to make.
Kenwood
has 20 (or maybe more) in-store demonstrators. Mr. Fry,
Kenwood's
Company Secretary, spoke to them (or some of them) at a training conference and made them aware of
Whirlpool's
allegation that the kMix and the KitchenAid Artisan were so similar in appearance that consumers would be likely to confuse the two products. He asked them to report any such instances. The demonstrators send written reports to their manager at regular intervals. He kept in contact with her. There were, to his knowledge, no reports of any instances of confusion. He gave evidence to that effect on Day 4 of the trial.
Whirlpool's
solicitors then called for disclosure of the demonstrators' reports and any related documents covering the period since launch. I understand that approximately 2,000 pages of documents were collated and examined.[59] Three documents were added to the trial bundles.[60] A March 2008 report from Southampton referred to 'Lots of passing general interest - some good comparison questions re. KitchenAid similarities' and 'A couple on Saturday this week claimed we had "just copied KitchenAid". I explained unique features of kMix'. A January 2008 report from Birmingham noted that 'Some customers here have commented that kMix "looks like a KitchenAid". I've explained the retro design, highlighted its benefits and the fact that "
Kenwood"
is clearly written on the product to avoid confusion!' An email of 4 March 2008 observed in passing that Apparently KitchenAid, which is very similar and for the same price, offers a 5 year guarantee'. These documents evidence perceptions of similarity. They do not evidence any instances of confusion resulting from the existence of such perceptions.
Whirlpool's
in-store demonstrators also prepare written reports for their manager. Those for the relevant period were obtained from her during the course of the trial. I understand that only one of them contained anything that might possibly be regarded as relevant. This was added to the trial bundles.[61] It merely reported on arrangements for in-store demonstrations of the kMix in Scotland in February 2008.
3. During the period between October 2007 and the first week of January 2008 I had customers asking me questions at the John Lewis store in Bluewater which made me think they were confused about the KitchenAid and kMix mixers. For example, some people came up to me and told me that they wanted a KitchenAid mixer but then moved to the display of the kMix mixers to ask me to tell them about the product. I would have to say that they were now looking at a kMix mixer and move them back to the displays of KitchenAid mixers. Some were surprised as they clearly hadn't realised that they were looking at different mixers and some just didn't realise the KitchenAid mixers and kMix mixers were different brands coming from different companies. Other times, people would ask me to tell them about "these KitchenAid mixers" while pointing at the display of kMix mixers.
There were other customers who appeared to think that the KitchenAid and the kMix looked very similar, but who nonetheless seemed to be aware that they were different brands from different companies. She told me that she had most probably referred to the instances of apparent confusion in the weekly reports she sent to her manager. She also agreed that her recollection of events was unlikely to be any better at trial than it was when she prepared her witness statement in February. However, she was not cross-examined on the evidence given in paragraph 3 of her witness statement as quoted above. I accept her evidence, subject to the fact that the subsequent letter from
Whirlpool's
solicitors[63] indicated that the weekly reports they had obtained from her manager did not include any reports of confusion.
Kenwood
blender was being offered 'free' with every purchase of a
Kenwood
kMix mixer. According to Mrs. Evans 'She said she had been confused about the mixers and thought they were the same'. The customer bought a KitchenAid mixer at Fenwicks. The price of the mixer may have been slightly less than in John Lewis. Mrs Evans said she had reported the incident to her manager. I accept her evidence, again subject to the fact that the subsequent letter from
Whirlpool's
solicitors[64] indicated that the weekly reports they had obtained from her manager did not include any reports of confusion. I understand that attempts to trace the customer who bought the KitchenAid mixer were unsuccessful. It must, I think, be recognised that although the customer's apparent confusion may have been attributable to perceptions and recollections of shape and appearance as indications of trade origin, that is not an inevitable inference from the evidence I have received.
Whirlpool's
expert witness, Mr. Piers Schmidt, has extensive experience of marketing and brand consultancy. However, he has no expertise in the area of stand mixers or kitchen appliances more generally. His comments and observations were necessarily dependent on research into the matters relating to mixers that he was asked to consider[69]. Those matters included the status and reputation of the KitchenAid stand mixer in the EEA and worldwide (in particular in relation to its shape and colours) and the distinctiveness (if any) of the shape and get-up (with and without bowl) of the KitchenAid stand mixer.
Kenwood's
expert witness, Mrs. Trudy Watson, has extensive experience as a commercial buyer of small domestic appliances (including stand mixers) for retail sale to consumers in the United Kingdom and other Member States. It has been a key part of her work to understand the buying patterns of consumers, the relevance of brands, new design, trends in the market and ultimately what makes the consumer take the final decision to purchase one product over another.
Kenwood
and its kMix product. His stance can clearly be seen from the language of his conclusions[72]:
... the shape is so similar that it must surely infringe on the KitchenAid shape mark if the mark's registration is valid (para. 254)
... I believe that the branding of the kMix is at best naive and may actually be deliberately trying to benefit from the goodwill that rightly belongs to KitchenAid (para. 297)
What we see with the kMix is a lame and frankly cynical spoiler (para. 321)
I personally have little doubt thatKenwood
have attempted to mimic the KitchenAid stand mixer in nearly every aspect ... (para. 321)
... hitching a subsidised rise on the coat tails of a successful competitor in a sly attempt to erode their market share (para. 322)
It's not quite a cheap 'Gucci' from Patpong market but neither is it original (para. 324)
It appears to me not only from his approach as I have thus far outlined it, but also from the way in which he constructed his report, that he was endeavouring to collate information and develop arguments in support of
Whirlpool's
case. In particular, I have in mind his searching of the internet for textual material to deploy and the presentation of it (sometimes with adjustment) as his own. Mr. Schmidt was cross-examined at some length about this.[73] He had no satisfactory explanations to give in response to most of the questions that were asked of him. I cannot be confident that his selective recycling of other people's comments and observations was confined to the detected instances on which he was questioned.[74] It was certainly not satisfactory to hear him repeatedly say that he was 'puzzled' by his own evidence to the effect that a Swedish website featuring various kitchen products (including the KitchenAid mixer) was a fan site created by and for brand lovers, when anyone who visited the website would have seen that it was a commercial site operated by a cookware retailer.[75] I think I have at this point said enough to explain why I intend to regard Mr. Schmidt's 'expert evidence' as search-supplemented advocacy for
Whirlpool
and nothing more.
Kenwood
with its kMix product is appealing to consumers at the premium end of the market and 'is certainly trying to compete with KitchenAid for a very similar type of consumer' for whom style and design would be an important factor in product choice. She expected them to be clear about their preference when they came to purchase in the course of the 'real life' process of buying an expensive stand mixer. 'Once the consumer had had a proper look at the
Kenwood
kMix product the
Kenwood
branding would be clear to the consumer'. In cross-examination she agreed that the shape of the KitchenAid mixer is distinctive[77]. She agreed that the brand name KitchenAid would be 'the handle for everything else', including the shape in terms of which design conscious purchasers would naturally be inclined to think of the mixer.[78] She agreed that there is a distinct competitive advantage in being an iconic brand when selling to consumers moving from initial interest through to purchase in this sector of the market.[79]. She thought that consumers 'might fleetingly associate the KitchenAid stand mixer with the
Kenwood
KMix or vice versa' and also that having a similar 'look appeal' potentially attracts customers who would not have looked at the
Kenwood
Chef, but expected the initial reaction to be very quickly dispelled when potential customers looked properly at the products and observed the differences in style, specification and branding[80]. In circumstances where the kMix had been introduced and sold in the same premium market and to the same type of customers as the KitchenAid mixer she thought that there would have been lots of comment by customers talking to in-store demonstrators about the two products comparatively and was surprised that there were not more comments than there appeared to be from the evidence before the Court[81]. Mrs. Watson gave her evidence fairly. She gave the kMix a reasonably good character reference on the basis of her experience as a commercial buyer. I take note of what she said, without regarding it as decisive of the issues I must determine from the perspective of the relevant average consumer.
Whirlpool
have successfully capitalised on that by making the finished appearance of the Artisan a point of reference for such consumers in the stand mixer market. So much so that the more familiar they are with the mixer, the more likely they are to perceive and remember the finished appearance of it as an indication of trade origin. The mindset I am referring to is not simply association in the sense of awareness that supplier X markets goods having the finished appearance Y[82]. I am referring to the degree of recognition implicit in a settled belief that KitchenAid = finished appearance A (for Artisan) and finished appearance A (for Artisan) = KitchenAid. There is, in my judgment, a not insubstantial body of design conscious consumers in the United Kingdom (and I would expect in France and Germany) for whom the finished appearance of the Artisan functions as an indication of trade origin even without assistance from the denomination KitchenAid[83]. I have paused over the question whether that is also the position with regard to the disaggregated mixer head and stand graphically represented in the Community trade mark registration. In the end I have come to the conclusion that it is, on the basis that the bodywork of the unitary mixer head and stand is liable to cut through the finished appearance of the Artisan in much the same way as the bodywork of a stylish motor car is liable to cut through the finished appearance of the vehicle as marketed.
Whirlpool
can pursue a claim for infringement by reference to the presumed expectations of design conscious consumers.[84] It was suggested on behalf of
Kenwood
that the relevant assessment should be made by reference to the average among all consumers in the market for all of the different types of 'electric beating and mixing machines' that would be covered by the Community trade mark registration in Class 7. I do not agree. The ECJ has confirmed that it is the circumstances characterising the allegedly infringing use which must be considered in order to determine the question of liability for infringement.[85] It is necessary to conduct a risk assessment. The tribunal must assess the likelihood of the conduct in question giving rise to consequences of the kind proscribed. The 'average consumer' test standardises the approach to assessment. It does so by requiring the tribunal to judge the matter from the viewpoint of a consumer exercising neither too low nor too high a degree of perspicacity. It does not permit or require the tribunal to exclude any relevant factors from the assessment of risk. The Artisan and the kMix are both premium priced products targeted at design conscious consumers. It follows, in my view, that the question of liability for infringement can properly be determined by taking the presumed expectations of such consumers into account. To hold otherwise would be to apply a test divorced from the actualities of the case.
Kenwood
product. No one who was actually contemplating the possibility of spending more than £300 on the purchase of either product would be under any misapprehension as to their true trade origin.
KENWOOD
is a strong and well-established trade mark for mixers. I can see no likelihood of confusion occurring during the process leading from selection through to purchase of a kMix product.[87]
Article 9
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) ...
(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
2. The following, inter alia, may be prohibited under paragraph 1:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under that sign;
(d) using the sign on business papers and in advertising.
3. ….
Article 12
Limitation of the effects of a Community trade mark
A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) ...
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) ...
provided he uses them in accordance with honest practices in industrial or commercial matters.
Kenwood
maintained that the kMix embodied nothing in the nature of a 'sign' to which
Whirlpool's
claim for infringement of its three-dimensional trade mark registration could apply. What is a sign? Something that tells you something. In Philips Electronics NV v. Remington Consumer Products[92] Jacob J. said:
I think a "sign" is anything which can convey information. I appreciate that this is extremely wide, but I can see no reason to limit the meaning of the word. The only qualification expressed in the directive is that it be capable of being represented graphically.
Later cases in the ECJ support that view by distinguishing between that which is 'a simple property' of something and that which can 'convey meaning' and therefore be a 'sign'[93]. The bodywork of the kMix is informative. It makes a non-verbal statement to the effect that the kMix is a mixer. It thus operates as a 'sign'. There is ample confirmation of that in the completed questionnaires I have seen in this case. So much so that I thought I would be asked to decide whether Article 12(b) provided
Kenwood
with a defence to
Whirlpool's
claims for infringement under Articles 9(1)(b) and 9(1)(c) on the basis that the bodywork of the kMix indicated 'the kind... intended purpose... or other characteristics of the goods'[94] and that
Kenwood
were using it 'in accordance with honest practices in industrial or commercial matters'. However,
Kenwood
preferred to defend the claims for infringement without relying on the provisions of Article 12(b). I therefore take its 'no sign' defence to be an abbreviated version of its 'no conflict' defence under Articles 9(l)(b) and 9(l)(c).
Whirlpool's
claim under Article 9(1)(b) relied on the proposition that there would be a likelihood of confusion unless and until the branding of the kMix as a
KENWOOD
product impinged upon the consciousness of interested consumers: the shape and appearance of the kMix would initially tell them it was a 'KitchenAid' product and the
KENWOOD
branding would not tell them otherwise until after they had gone down the road of selection with a view to purchase. It is possible for a claim to succeed on that basis[96]. However, I do not accept that in the present case there will be any initial confusion in the mind of the relevant average consumer. There will, in my view, be nothing more than an awareness that the product they are looking at is not the one it reminds them of. I am not persuaded otherwise by the evidence of the KitchenAid demonstrators. Their evidence relating to the incidents to which they refer provides no firm basis for concluding that there is similarity between the bodywork of the Artisan and that of the kMix sufficient to give rise to a risk that the relevant public might believe the mixers come from the same undertaking or, as the case may be, from economically linked undertakings[97]. The claim for infringement under Article 9(1)(b) is not made out on the evidence and materials before me.
Kenwood
suggested that this means a reputation across the Community as a whole or at least a large area of it[98]. I do not agree. In the case of a trade mark registered at the national level, protection of the kind provided by Article 9(1)(c) can be claimed for trade marks which have a reputation in the sense that they are known by a significant part of the public concerned by the products or services covered by that trade mark in the territory of registration[99]. Since the territory of registration is part of the Community, the trade mark has a reputation in the Community. The trade mark does not cease to have a reputation in the Community if the national registration is either subsumed within a Community trade mark registration under Article 34(2) CTMR on the basis of a valid claim to seniority[100] or duplicated by a Community trade mark registration. In principle, a Community trade mark should not receive less protection than a national trade mark with a reputation in the same territory. I think that the aim should generally be to prevent conflict occurring in any substantial part of the Community[101] and that the United Kingdom can for that purpose be regarded as a substantial part of the Community, with or without the addition of France and Germany. It thus appears to me that
Whirlpool's
Community trade mark has a reputation in the Community.
40. Article 5(2) of the Directive establishes, for the benefit of trade marks with a reputation, a form of protection whose implementation does not require the existence of a likelihood of confusion. Article 5(2) applies to situations in which the specific condition of the protection consists of a use of the sign in question without due cause which takes unfair advantage of, or is detrimental to, the distinctive character or the repute or the trade mark (see Marca Mode, paragraph 36, and Adidas-Salomon and Adidas Benelux, paragraph 27).
41. The infringements referred to in Article 5(2) of the Directive, where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them. It is not therefore necessary that the degree of similarity between the mark with a reputation and the sign used by the third party is such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark (see Adidas-Salomon and Adidas Benelux, paragraphs 29 and 31).
42. The existence of such a link must be appreciated globally, taking into account all the relevant factors relevant to the circumstances of the case (Adidas-Salomon and Adidas Benelux, paragraph 30).
So there must be 'similarity between the sign and the mark' resulting in 'the establishment of a link' productive of the consequences required for fulfilment of the 'specific condition' before there can be liability for infringement under Article 9(l)(c).
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves; or (ii) the shape of goods which is necessary to obtain a technical result; or
(iii) the shape which gives substantial value to the goods;
It seems to me that the policy considerations underlying the sub-paragraphs of Article 7(1)(e) also have a role to play in the determination of the question whether there is similarity between the bodywork of the Artisan and kMix mixers such that the latter without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the former.
Whirlpool
objects to the bodywork of the kMix on the basis that it is a lookalike which comes too close to the Artisan. For the purpose of deciding whether the sign and the mark are too close, it is necessary to bear in mind that distinctiveness and similarity are different concepts which must each be weighed appropriately when making the required global assessment.[104] That is necessary because the Community trade mark system establishes a regime for protection in which (say) 50% similarity to a 'strong' mark may be just as objectionable as (say) 75% similarity to a 'weak' mark. In the overall assessment there could be a finding that the bodywork of the kMix and that of the Artisan were too close if upon weighing distinctiveness and similarity factorially it was concluded: (1) that the shapes were relevantly similar (by being similar in respects related to the distinctiveness of the protected trade mark); and (2) that they were sufficiently similar (by being relevantly similar to a degree which impinged upon the distinctiveness of the protected trade mark) to satisfy the 'specific condition' for liability under Article 9(l)(c).
• to take unfair advantage of the distinctive character or repute of the trade mark represented by the bodywork of the Artisan mixer?
• to be detrimental to the distinctive character of repute of the represented by the bodywork of the Artisan mixer?
I cannot see that it is. The reminder appears to me to leave the distinctive character and repute of the trade mark represented by the bodywork of the Artisan mixer completely untouched. It is apt to erode the market share of the KitchenAid product, but without impinging upon any aspect of the property appertaining to the trade mark. So it comes within the scope of the principle that:
No economic operator can claim a right to property in a market share ... a market share constitutes only a momentary economic position exposed to the risks of changing circumstances.[107]
The trade mark represented by the bodywork of the Artisan is, as I have said, distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for the purposes of Article 9(1)(c). I am not persuaded otherwise by the evidence indicating that consumers may or will be drawn into choosing the kMix by reason of its resemblance to the Artisan. Resemblance can have that effect without being objectionable from a trade mark point of view. The claim for infringement under Article 9(1)(c) is not made out on the evidence and materials before me.
(1) that the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;
(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and
(3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation.
My findings in relation to the claim for infringement lead me to the conclusion that although the first of the three elements is satisfied with regard to the finished appearance of the Artisan mixer, the second element is not established with regard to the finished appearance of the kMix. The third element therefore cannot be established. I conclude that the claim in passing off is not made out.
KENWOOD
branded KMix shown in paragraph 6 above. The special edition was a kMix bearing the trade mark AGA in lieu of
KENWOOD
beneath the dial and carrying the following wording on the backplate: special edition by
KENWOOD.
HREF='#note109'>[109] The special edition is marketed through AGA cookware shops.[110] It displaced the KitchenAid Artisan mixer in their shops. I can well understand why this was commercially disconcerting from
Whirlpool's
point of view. However, on considering the evidence relating to the changeover and such evidence as there is in relation to the marketing of the special edition I cannot see any reason why it should not stand on the same footing with regard to liability as the
KENWOOD
kMix I have considered above. There are no additional concerns that I can identify with regard to the introduction or marketing of the special edition.
Note 1 Case C-104/01 Libertel Groep BV v. Benelux-Merkenbureau [2003] ECR I-3793, paras 57 to 59; Case C-404/02 Nichols plc v. Registrar of Trade Marks [2004] ECR I-8499, paras 32 to 34; Case C-102/07 Adidas AG v. Marca Mode CV [2008] ECR I-00000, paras 26 and 49. [Back] Note 2 Alexander von Mühlendahl Community Trade Mark Riddles: Territoriality and Unitary Character [2008] EIPR 66 at pp.68 et seq. [Back] Note 3 In Case C-301/07 PAGO International GmbH. [Back] Note 4 Case C-220-98 Estée Lauder Cosmetics GmbH & Co. OHG v. Lancaster Group GmbH [2000] ECR I-117 at paras. 27 to 31. See also paras. 59 to 65 of the Opinion of Advocate General Jacobs in Case C-312/98 Schutzverband Gegen Unwesen In Per Wirtschaft EV v. Warsteiner Brauerei Haus Cramer GmbH & Co KG [2000] ECR I-9187. [Back] Note 5 Transcript Day 8, p. 1116. [Back] Note 6 Case C-273/00 Sieckmann v. Deutsches Patent-und Markenamt [2002] ECR I-11737 at paragraphs 54, 55. [Back] Note 7 L'OréalSA v. Bellure NV [2007] EWCA Civ 968 at para. 110 per Jacob LJ. [Back] Note 8 Commission Regulation (EC) No. 2868/95 of 13 November 1995 as amended by Council Regulation (EC) No. 782/2004 of 26 April 2004 and further amended by Council Regulation (EC) No. 1041/2005 of 29 June 2005. [Back] Note 9 Case C-136/02P Mag Instrument Inc. v. OHIM [2004] ECR I-9165 at paras. 50, 55 and 56. [Back] Note 10 Case C-136/02P Mag Instrument Inc at para. 32. [Back] Note 11 Case C-24/05P August Storck KG v. OHIM (Storck I) [2006] ECR I-5677 at para. 29. [Back] Note 12 Quoted from Case C-24/05P Storck I. [Back] Note 13 Case C-24/05P Storck I at paragraphs 28 to 30; Case C-25/05P August Storck KG v. OHIM (Storck II) [2006] ECR1-5719 at paragraphs 31 to 33. [Back] Note 14 Case C-299/99 Philips at paras. 49, 50. [Back] Note 15 Case C-136/02P Mag Instrument Inc at paras. 64 to 68; Société de Produits Nestlé SA v. Unilever Plc [2002] EWHC 2709 (Ch), [2003] ETMR 53, p.681 at para. 18 (Jacob J). [Back] Note 16 Case C-173/04P Deutsche SiSi-Werke GmbH & Co. Betriebs KG v. OHIM [2006] ECR I-551 at paragraphs 31 to 33. [Back] Note 17 Compare Bongrain SA's Trade Mark [2004] EWCA Civ 1690, [2005] ETMR 47, p.604 with the judgment of the German Supreme Court in Case I ZB 38/00 Cheese Shape IR-Mark No. 670, 278 (4 December 2003) noted at [2005] EIPR N-3. [Back] Note 18 Case C-25/05P Storck II at paragraphs 83 to 86. [Back] Note 19 In Case C-24/05 Storck I. [Back] Note 20 cf Bach and Bach Flower Remedies Trade Mark [2000] RPC 513 (CA) at paragraph 49 per Morritt LJ. [Back] Note 21 8 April 1998. OJ OHIM 1998, 701. [Back] Note 22 i.e. Articles 2, 3 and 6 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. [Back] Note 23 Case C-104/01 Libertel Groep BV v. Benelux-Merkenbureau [2003] ECR I-3793 at paras. 57 to 59; see also Case C-363/99 Koninkliike KPN Nederland NV v. Benelux-Merkenbureau [2004] ECR I-1619 at paras. 123 to 126. [Back] Note 24 Case C-145/05 Levi Strauss & Co v. Casucci SpA [2006] ECR I-00000, see paras. 16, 17, 20, 24, 25, 29, 30, 33 and 34. [Back] Note 25 in the words of Jacob J. in Philips Electronics BV v. Remington Consumer Products [1998] RPC 283 at pp. 296 and 312, a 'limping trade mark'. [Back] Note 26 Bundle El/Tab. 1 at pp.240 to 248 and Bundle C3 Tab 42. [Back] Note 27 Case C-120/04 Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-8551 paras. 30 to 36. [Back] Note 28 Case C-488/06P L&D SA v. OHIM [2008] ECR I-00000, paras 31, 55 and 84; Case I ZR 37/04 Golden Rabbit Trade Mark [2007] ETMR 30, p.465 (BGH); Julius Sämann Ltd v. Tetrosyl Ltd [2006] EWHC 529 (Ch) (Kitchin J.); BP Amoco Plc v. John Kelly Ltd [2002] FSR 5, p.87 (CA. NI); Reckitt & Colman Products Ltd v. Borden Inc. [1990] RPC 341 (HL); Levi Strauss & Co. v. Shah [1985] RPC 371 (Whitford J.). [Back] Note 29 Exhibit IR5, Bundle D2/Tab. 5 as shown in para. 117 of the Expert Report of Trudy Watson, Bundle B(l)/Tab. 3. [Back] Note 30 Transcript Day 4, pp. 557, 558. [Back] Note 31 Exhibit BM4, Bundle C3/Tab 37 [Back] Note 32 Exhibit BM6, Bundle C3/Tab 39. [Back] Note 33 The company brought proceedings for infringement of its UK registered trade mark KitchenAid against a defendant using Kitchen Aid for 'mixing machines and the like' in 1959: Hobart Manufacturing Coy v. Cannon Industries Ltd [1959] RPC 269. [Back] Note 34 Bundle El/Tab 1 (Exhibit A, Exhibit B). [Back] Note 35 Exhibits DV13 to DV15 and DV35 to DV43. [Back] Note 36 Exhibits BM15 and BM16, Bundle C3/Tabs 48, 49. [Back] Note 37 Transcript Day 2 p.215 [Back] Note 38 Exhibit BM14, Bundle C3/Tab 47; Exhibit TAW 14, Bundle B3/Tab 14. [Back] Note 39 Bundle B3/Tab 14 p.209. [Back] Note 40 Webb, Campbell, Schwartz and Sechrest Unobtrusive Measures (Revised edn, Sage Publications Inc, 2000). [Back] Note 41 Imperial Group Plc v. Philip Morris Ltd [1984] RPC 293 at 302, 303 (Whitford J.). [Back] Note 42 esure Insurance Ltd v. Direct Line Insurance Plc [2008] EWCA Civ 842 (Arden, Jacob and Maurice Kay L.JJ) at paras. 63, 78 and 79. [Back] Note 43 Arnotts Ltd v. Trade Practices Commission (1990) 97 ALR 555 at 606. [Back] Note 44 [1989] FSR 100 at 109 per Fox LJ. [Back] Note 45 Order of Lightman J. dated 13 November 2007, paras. 12 et seq.; Bundle A/Tab. 15. [Back] Note 46 Exhibit NDW1, Bundle C5/Tab. 1. [Back] Note 47 at Leon Jaeggi & Sons in Shaftesbury Avenue, London Wl; outside Pages Cookware in Shaftesbury Avenue, London WC2; inside La Cuisinière Cookware and Tableware in London SW11; outside Peter Jones in Sloane Square, London SW1; at the Theo Randall restaurant in the Intercontinental Hotel on Park Lane, London Wl; at Regents Park Road, London NW1; at Chalk Farm Road, London NW3; outside Whole Foods Market, London W8. [Back] Note 48 The questions can, perhaps, be deduced from the witness statements of Philip Humbert at C6/Tab. 1 and Tracy Wilson at C6/Tab 3. [Back] Note 49 Ruth Pitcher WS C6/Tabs 7 and 8; Helga Olafsson WS C6A/Tabs 39 and 40. [Back] Note 50 Bethany Hughes WS C6A/Tabs 41 and 42, Transcript Day 4 pp. 583 et seq; Army Mansey WS C6A/Tabs 45 and 46, Transcript Day 1 pp. 62 et seq. [Back] Note 51 Philip Humbert WS C6/Tabs 1 and 2; Jane Grey WS C6/Tabs 5 and 6; Patricia Morrison WS C6/Tabs 19 and 20; Roger Adams WS C6A/Tabs 33 and 34; Emma Cave WS C6A/Tabs 49 and 50. [Back] Note 52 Mirja Bauer WS C6/Tabs 13 and 14, Transcript Day 1 pp. 94 et seq. [Back] Note 53 Transcript Day 2 p.262. [Back] Note 54 Transcript Day 2 pp.265 to 267. [Back] Note 55 Exhibit PW1, Bundle C5/Tab 9. [Back] Note 56 Tracy Wilson WS C6/Tabs 3 and 4; Vicky Leffman WS C6/Tabs 9 and 10; Pamela Stoker WS C6/Tabs 15 and 16; Victoria Wells WS C6/Tabs 23 and 24; Joanne Langston WS C6A/Tabs 27 and 28; Sarah Gronmark WS C6A/Tabs 29 and 30; Mary Bell WS C6A/Tabs 37 and 38; Laura Dubois WS C6A/Tabs 43 and 44; Jennifer Johannes WS C6A/Tabs 47 and 48. [Back] Note 57 Clare Flatman WS C6/Tabs 11 and 12, Transcript Day 2 pp. 154 et seq; Sarah Hershman WS C6/Tabs 17 and 18, Transcript Day 5 pp. 665 et seq; Anne Banks WS C6/Tabs 21 and 22, Transcript Day 2 pp. 164 et seq; Vanessa O'Donnell WS C6A/Tabs 31 and 32, Transcript Day 2 pp. 137 et seq. [Back] Note 58 Simon Morrissey WS C6A/Tabs 25 and 26, Transcript Day 1 pp. 110 et seq.; Bruce Hutchison WS C6A/Tabs 35 and 36, Transcript Day 2 pp. 122 et seq. [Back] Note 59 Transcript, Day 6 p. 829. [Back] Note 60 Bundle X/Tab. 13. [Back] Note 61 Bundle X/Tab. 16. [Back] Note 62 Julie Champion WS CI/Tab. 6, Transcript Day 3 pp. 322 et seq; Samantha Pollock WS CI/Tab. 7, Transcript Day 3 pp. 312 et seq; Janet Evans WS C1/Tabs 8 and 9, Transcript Day 4 pp. 519 et seq. Similar evidence was given by Geert van Lantschoot WS C21/Tab 5. His statement was taken as read on the basis I have described. [Back] Note 63 Letter of 15 May 2008, Bundle X/Tab. 16. [Back] Note 64 Letter of 15 May 2008, Bundle X/Tab. 16. [Back] Note 65 Order of Lightman J. dated 13 November 2007, para. 21; Bundle A/Tab. 15.. [Back] Note 66 Sections 3(1) and (3) of the Civil Evidence Act 1972; Technip France SA's Patent [2004] EWCA Civ 381, [2004] RPC 46, p. 919 at paras 13, 14 per Jacob LJ. [Back] Note 67 esure Insurance Ltd v. Direct Line Insurance Plc [2008] EWCA Civ 842 at paras. 67, 75 to 77 and 80 to 82 (per Jacob and Maurice Kay L JJ). [Back] Note 68 esure Insurance Ltd v. Direct Line Insurance Plc [2008] EWCA Civ 842 at paras. 57 and 62 per Arden LJ, paras. 72 to 77 per Jacob LJ and paras. 80 to 82 per Maurice Kay LJ. [Back] Note 69 Annex F to Report; Bundle B(2)Tab 1 p.44. [Back] Note 70 Transcript Day 3 pp. 472, 473 and 493; Day 4 pp. 507, 508. [Back] Note 71 Transcript Day 4 p. 490. [Back] Note 72 Report I, Bundle B(l)/Tab. 1. [Back] Note 73 Transcript Day 3 pp. 375 to 380, 396 to 401, 403 to 410, 417, 419 to 421. [Back] Note 74 Listed at Bundle X/Tab. 12.
[Back] Note 75 Transcript Day 3 pp. 380 to 386; pages downloaded from the website are at Bundle X/Tab. 6. [Back] Note 76 Bundle B(l)/Tab 3. [Back] Note 77 Transcript Day 5 p. 817. [Back] Note 78 Transcript Day 5 pp. 821, 822. [Back] Note 79 Transcript Day 6pp.843to848.
[Back] Note 80 Transcript Day 6 pp.849 to 851. [Back] Note 81 Transcript Day 6 pp.841 to 843. [Back] Note 82 As to which see Unilever Ltd's (Striped Toothpaste No.2) Trade Marks [1987] RPC 13 (Hoffmann J); Vibe Technologies Ltd's Application BL O-166 08, 16 June 2008 (Mr. Richard Arnold QC) at paras. 72 to 91; and Kerly's Law of Trade Marks and Trade Names 14th Edn (2005) paras. 8-023 to 8-025. [Back] Note 83 These are the consumers that the Artisan is specifically targeted at: Transcript Day 2 pp. 229, 230. [Back] Note 84 I do not doubt that their expectations can and should be taken into account for the purposes of a claim in passing off in a case such as the present, involving head to head competition in a premium price sector of the market. [Back] Note 85 Case C-533/06 O2 Holdings Ltd v. Hutchison 3G UK Ltd [2008] ECR1-00000, at para. 67. [Back] Note 86 Bundle Gl/pp. 189 to 191 (Libby Tune). [Back] Note 87 and I note that Mr. Vermeiren accepted in his evidence on behalf of Note 88 Case C-48/05 Adam Opel AG v. Autec AG [2007] ECR I-1017, paras. 17 to 22 and 29; Case C-17/06 Celine SARL v. Celine SA [2007] ECR I-7041, paras. 15 to 27; Case C-533/06 02 Holdings Ltd v. Hutchison 3G UK Ltd [2008] ECR I-00000, paras. 34 to 36 and 56 to 68. [Back] Note 89 Case C-17/06 Céline, para. 20; Case C-63/97 Bayerische Motorenwerke AG v. Deenik [1999] ECR I-905, para. 38; Case C-245/02 Anheuser-Busch Inc. v. Budejovicky Budvar NP [2004] ECR I-10989, paras. 59 to 64; Case C-23/01 Robelco NV v. Robeco Groep NV [2002] ECR I-10913, paras. 28 to 31. [Back] Note 90 Case C-102/07 Adidas AG v. Marca Mode CV [2008] ECR I-00000, paras. 44 to 49. [Back] Note 91 Case C-102/07 Adidas, paras. 26 and 32 to 36; Case C-408/01 Adidas-Salomon AG v. Fitnessworld Trading Ltd [2003] ECR I-12537, paras. 38 to 41; RxWorks Ltd v. Dr. Paul Hunter [2008] RPC 13, p.303 (Mr. Daniel Alexander QC) at paras. 52 to 54. [Back] Note 92 [1998] RPC 283 at 298. [Back] Note 93 Case C-49/02 Heidelberger Bauchemie GmbH's Trade Mark Application [2004] ECR I-6129, paras. 22, 23; Case C-104/01 Libertel Groep BV. paras. 26 27. [Back] Note 94 As contemplated by the ECJ in Joined Cases C-53/01 to C-55/01 Linde AG, Winward Industries Inc., Rado Uhren AG [2003] ECR I-3161, paras. 69, 70; and Case C-218/01 Henkel KGaA v. Deutsches Patent-und Markenamt [2004] ECR I-1725, paras 42 and 44. [Back] Note 95 Case T-246/06 Redcats SA v. OHIM [2008] ECR II-00000, paras. 27, 28; Case T-168/04 L&D SA v. OHIM [2006] ECR II-00000, paras 67 to 71. [Back] Note 96 See BP Amoco Plc v. John Kelly Ltd [2002] FSR 5, p.87 (CA. NI) at para. 44 and the other cases cited in footnote 28 above. [Back] Note 97 Case C-102/07 Adidas AG, paras. 27 to 29. [Back] Note 98 This issue has been raised in the pending reference to the ECJ in Case C-301/07 PAGO International GmbH. [Back] Note 99 Case C-375/97 General Motors Note 100 RAPIER Trade Mark (BL O-170-07) 13 June 2007, paras. 1 to 5. [Back] Note 101 compare Case T-93/06 Mülhens GmbH & Co KG v OHIM [2008] ECR II-00000, paras. 33, 34. [Back] Note 102 Case C-102/07 Adidas AG. [Back] Note 103 Case C-371/06 Bennetton Group SpA v. G-Star International BV [2007] ECR I-00000. [Back] Note 104 Case C-235/05 P L'Oréal v OHIM [2006] ECR I-57, paras. 23 to 25 and 40 to 45, Case C-171/06 P T.I.M.E. ART v. OHIM [2007] ECR I-00000, paras. 26, 27 and 41. [Back] Note 105 Case C-533/06 O2 Holdings, paras. 35 to 37. [Back] Note 106 Case C-252/07 Intel Note 107 Case C-210/03 Swedish Match AB v. Secretary of State for Health [2004] ECR I-11893 at para. 73. Likewise 'There is no tort of taking a man's market or customers. Neither the market nor the customers are the plaintiffs to own' : Hodgkinson & Corby Ltd v. Wards Mobility Ltd [1994] 1 WLR 1564 (Jacob J.) at 1569. [Back] Note 108 Reckitt & Colman Products Ltd v. Borden Inc [19901 RPC 341 (HL) at 406 per Lord Oliver of Aylmerton and 417 per Lord Jauncey of Tullichettle. [Back] Note 109 photographs at Bundle D5/Tab 85. [Back] Note 110 online marketing material at Bundle X/Tab 15. [Back]
Whirlpool
that no one reading the word
KENWOOD
on the kMix or on labelling for the kMix would think it was a version of the KitchenAid mixer: Transcript Day 2, p.246. [Back]
Corp.
v. Yplon SA [1999] ECR I-5421, paras. 24 to 27. [Back]
Corporation Inc v. CPM United Kingdom Ltd. Opinion delivered on 26 June 2008. See paragraphs 46 to 61. [Back]