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Home | News & events | Legal updates | Shape trade marks difficult to enforce
Shape trade marks difficult to enforce
28 July 2009
Kitchen equipment manufacturer Whirlpool registered the shape of a food mixer as a Community trade mark.
Its application for the shape mark was initially rejected until the word KITCHENAID was applied to the mixer, after which the shape was deemed to be distinctive.
Rival Kenwood later entered the same market with a similarly designed mixer, prompting Whirlpool to sue for trade mark infringement and passing off.
Whirlpool alleged that Kenwood's mixer was detrimental to the distinctive character of Whirlpool's mark, and/or was obtaining an unfair advantage due to the similarity between the products.
The High Court found that even though there was enough similarity between the two products to remind consumers of the other product, this was not the same as a consumer believing that the two products were the same.
The judge held that there was no likelihood of confusion between the two products, and so Kenwood's mixer did not infringe Whirlpool's shape trade mark, was not detrimental to the mark, or obtaining an unfair advantage.
Whirlpool appealed the decision.
Court of Appeal ruling
The Court of Appeal dismissed Whirlpool's appeal, holding that:
- the two products were similar in style predominantly because both were ‘stand alone mixers designed to a high standard of style, so as to be attractive products on the kitchen work surface'
- an assessment of similarity between the products had to be carried out on a global basis, and that whilst the two products were similar enough to remind relevant consumers of each other and therefore establish a link, that link did not cause any detriment to the shape mark, nor did it give Kenwood an unfair advantage. Therefore, the Kenwood mixer did not infringe Whirlpool's shape mark.
What does this mean?
The case emphasises how difficult it can be for brand owners to register shape marks.
Indeed, it seems that it was only the addition of the word KITCHENAID to the shape application that made the mark registerable in the first place.
So it follows that there is no point registering a shape unless you are going to be able to enforce it. To be enforceable there now needs to be a link which causes detriment. Proving detriment is a difficult thing to do
What should you do?
- Unless the shape mark is to be used solely for deterrent purposes, only register a shape mark if your product has a strong, distinctive element to it, not just a distinctive word applied to the product.
- Consider whether alternative types of IPR protection are stronger for you e.g. design rights, patents etc.
- Look at your target market when assessing enforceability; the judge in this case said design similarity was inevitable, due to the target market being the ‘design conscious consumer'.
- Think about the importance of the intended function of the product - if function dictates shape, enforcing any rights will be difficult.
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Rachael Parman
Associate
T: 03700 86 8494
I: +44 (0)1908 48 8494
E: rachael.parman@shoosmiths.co.uk