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20 November 2017
On 1 November 2017, the Court of Appeal upheld the ruling against The London Taxi Corporation Ltd (“LTC”) in favour of defendants Frazer-Nash Research Limited (“FRN”) and Ecotive Limited (“Ecotive”).
LTC had argued that their UK and EU registered trade marks, which depict models of its taxis, were being infringed by FRN and Ecotive’s model of the new Metrocab. Considering the issue in the High Court, Arnold J held that both of LTC’s trade marks were invalid, stating that ‘neither of the trade marks had acquired a distinctive character’. Arnold J continued to conclude that, even if the two LTC trade marks had been valid, FRN and Ecotive would still not have been found liable for infringement under the UK Trade Mark Act 1994 or for the common law tort of passing off.
Dismissing LTC’s appeal in the Court of Appeal, Lord Justice Floyd held that there were three necessary criteria to consider in order to establish whether a trade mark possessed an inherent distinctiveness of character:
Considering the “London black cabs” in relation to the car sector, Lord Justice Floyd upheld the decision that ‘the marks [did] not differ significantly from the norms and customs’ and thus were void of inherent distinctive character.
Lord Justice Floyd also considered whether the two LTC trade marks had acquired distinctive character but found that it had not sufficiently been established that drivers would solely associate the shape of the “London black cabs” with LTC.
Whilst Lord Justice Floyd left the possibility of further appeal open, and the case may still proceed as far as the Supreme Court, the current decision will clearly be a disappointment for LTC and a victory for FRN and Ecotive, as well as other rival companies, who can now freely manufacture and release similar black cabs without fear of being held liable for trade mark infringement.
With so much at stake, it is likely that LTC will appeal this decision and it will be interesting to see what happens next. As it stands, we are left with a confirmed understanding that it is increasingly difficult to register a shape trade mark, with the Court placing emphasis on the need for the shape of the trade mark to differ significantly from the norms and customs of the sector in which it is used. It is therefore essential that the criteria established by Lord Justice Floyd is fully considered ahead of any future applications.
If you require further information on anything covered in this briefing, please contact Fiona McBride (email@example.com; +441179253030) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
 Para. 264 The London Taxi Corporation Limited v. Frazer-Nash Research Limited and Ecotive Limited  EWHC 52 (Ch)
 Para. 45 The London Taxi Corporation Limited v. Frazer-Nash Research Limited and Ecotive Limited  EWCA Civ 1729
 Para. 49/50 The London Taxi Corporation Limited v. Frazer-Nash Research Limited and Ecotive Limited  EWCA Civ 1729
© Withers & Rogers LLP, November 2017