article
Shape as a trademark
16 October 2009
The UK Court of Appeal has dismissed an appeal by Whirlpool in
Whirlpool Corporation v Kenwood Limited, a case which dealt with
the alleged infringement by Kenwood’s new stand mixer of
Whirlpool’s Community Trade Mark.
Background
Whirlpool, a well known manufacturer of kitchen equipment,
manufactures and sells the KitchenAid Artisan, a stand mixer with a
“retro feel”. The KitchenAid, sold in the UK since 1994 is regarded
as being a particularly stylish and even iconic design.
Whirlpool has a Community Trade Mark (“CTM”) for the shape of
the KitchenAid (excluding the mixing bowl) consisting of an outline
of the mixer which is described as “…a fanciful electric beating
and mixing machine configuration upon which the word KitchenAid
appears”.
In July 2007, Kenwood, another well established manufacturer of
kitchen equipment, launched its kMix stand mixer. Whirlpool argued
that the shape of the kMix infringed its CTM. It also made a claim
of passing off.
Article 9.1(b) of the Regulation on the Community Trade Mark
(the “Regulation”) provides that the proprietor of a CTM is
entitled to prevent third parties from using in the course of trade
“any sign where because of its identity or similarity…and the
identity or similarity of the goods or services…there exists a
likelihood of confusion …”.
Article 9.1(c) entitles the CTM proprietor to prevent use of
“any sign identical or similar to the CTM in relation to goods or
services which are not similar to those for which the CTM 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 CTM”. It has been established that Article 9.1(c) should also
apply where the goods or services are identical or similar to those
for which the CTM is registered.
At first instance, the High Court rejected Whirlpool’s claims.
There was enough similarity between the KitchenAid and the kMix for
the one mixer to remind the average consumer of the other, but the
average consumer would not be confused into mistaking one mixer for
the other and therefore there could be no likelihood of confusion
as required by Article 9.1(b). The similarity was enough to
establish a link between the two marks for the purposes of Article
9.1(c), but the court concluded that there was no effect upon the
“distinctive character and repute of the trade mark”.
Whirlpool’s Appeal
On the question of similarity, the judge had considered Article
7(1)(e) which prohibits registration of a sign as a CTM if it
consists exclusively of the shape of goods which results from the
nature of the goods themselves, the shape of goods which is
necessary to obtain a technical result, or a shape which gives
substantial value to those goods.
On appeal, Whirlpool said that the judge had misdirected himself
in referring to this Article. The Court of Appeal disagreed. The
judge was correct to find that Article 7(1)(e) was relevant to the
assessment of whether there was a sufficient similarity between the
CTM and the sign (the kMix), both being shapes. It was not a
misdirection to note that the mark and sign both consisted of the
shape of the product itself and that the shape of the KitchenAid
whilst having some distinctiveness did not have any ‘fanciful or
capricious element as a distinguishing feature’.
The judge accepted that there was similarity, and that this was
sufficient to establish a link but decided that “it would be
excessive…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… for the purposes of Article
9(1)(c)”. The Court of Appeal decided that this meant no more than
that the relevant concepts cannot properly be applied so generally
as to find that the shape of the kMix is so close to that of the
CTM as to offend against the Article. The judge had not applied a
narrower test.
Final Comment
The Court of Appeal gave consideration to L’Oreal v Bellure
(reported in WIPR July/August 2009) but noted that the commercial
circumstances were different. Whirlpool had, until arrival of the
kMix, a monopoly in the high end sector of the mixer market.
Kenwood would inevitably have had knowledge of the kMix. This was
“not in itself sinister”. Kenwood had its own pre-existing
reputation and did not have the “intent” (as Bellure had shown) to
ride on the coat tails of Whirlpool’s reputation.
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