BLP successfully advises Frazer-Nash on new London taxi trade mark defence

International law firm Berwin Leighton Paisner (BLP) has successfully advised two Frazer-Nash group companies in legal proceedings against The London Taxi Company (LTC), following today’s ruling from the High Court.

The case was brought against Frazer-Nash for trade mark infringement and passing off by The London Taxi Company (LTC), makers of the TX black cabs. LTC also had its trade marks for the shape of its taxis invalidated in respect of cars.

LTC claimed that Frazer-Nash had intentionally copied the shape of its black cabs in designing its new zero-emissions capable London taxi, in an attempt to deceive both taxi drivers and the public that the new ‘Metrocab’ was one of LTC’s taxis. The Court fully rejected this allegation, finding that there is a low degree of similarity between the appearance of the new Metrocab and LTC’s taxis. The trade mark claims were also declared to be invalid and/or not infringed on various other grounds, including that the shape of the taxis gave the trade marks substantial value, that one of the shapes had not been put to genuine use for at least five years, and that Frazer-Nash had not taken unfair advantage of LTC’s trade marks.

The Judge found that LTC’s trade marks should never have been registered in the first place because they were not inherently distinctive, as they were merely variations of the typical shape of a taxi, and that they had not acquired distinctive character through use.

Simon Clark, Head of Intellectual Property, BLP said: “This case was the first opportunity for Mr Justice Arnold to apply his interpretation of the Court of Justice’s recent ruling in the KitKat case by finding that people did not perceive LTC’s taxis as originating from LTC because of their shape, as opposed to any other trade mark present, such as the badge on the front of their taxis. Taxi drivers will know who made the car they are buying and taxi passengers don’t care. Shape marks will only be registrable if the shape in itself acts as an indication of source.”

Rupert Ticehurst, Client Relationship Partner, BLP said: “As a team, we’ve worked closely across our Private Client Litigation and IP practices and our collaborative approach has proven successful in winning this decision for our client. The new Metrocab is a fantastic taxi providing revolutionary environmental benefits for London. This is a huge result and means that the taxi can now go into production.”

In a comprehensive judgment of nearly 300 paragraphs, the judge identified two aspects of trade mark law which will need to be resolved by the Court of Justice of the EU in the future (but on which no final decision was necessary in this case), namely:

  1. Whether it is enough that the shape of a product is unusual to establish inherent distinctiveness, or whether that is just one necessary factor; and
  2. Whether second hand sales of a product can amount to genuine use for the purposes of defeating a non-use challenge.

Alongside Simon Clark who led on the IP side of the case, BLP’s team comprised of Private Client Litigation Partner Rupert Ticehurst, Private Client Litigation Associate Simon Goldring and IP Associate Jamie Drucker.

BLP’s counsel was Mark Platts-Mills QC (8 New Square) and Philip Roberts of One Essex Court. For LTC it was Browne Jacobson and Douglas Campbell QC of Three New Square.

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