The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd & Anor

The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd & Anor

The claimant's trade marks were devoid of inherent distinctive character and had not acquired distinctive character by the relevant date. Both marks consist exclusively of the shape which gives substantial value to the goods and are invalid. The Community trade mark was not put to genuine use. The defendants' new Metrocab does not infringe the trade marks, as there is no likelihood of confusion, no reputation, and no unfair advantage or detriment. The honest practices defence would apply if necessary. The passing off claim fails as the relevant public does not rely on the shape as denoting trade origin.

Parties
Claimant: The London Taxi Corporation Limited trading as The London Taxi Company; Defendant: Frazer-Nash Research Limited; Defendant: Ecotive Limited
Jurisdiction
England and Wales
Judgment Date
20 January 2016
Procedural Posture
Trade Mark Infringement and Passing Off / Judgment After Trial
Outcome
Claim dismissed
Legal Topics
Trade Mark Validity, Trade Mark Infringement, Shape Marks, Distinctive Character, Substantial Value Exclusion, Genuine Use, Passing Off, Honest Practices Defence
Intellectual Property Trade Marks Passing Off Trade Mark Validity Trade Mark Infringement Shape Marks Distinctive Character Substantial Value Exclusion +2 more

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Parties

The London Taxi Corporation Limited trading as The London Taxi Company

Claimant

Frazer-Nash Research Limited

Defendant

Ecotive Limited

Defendant

Procedural Posture

Trade Mark Infringement and Passing Off / Judgment After Trial

Legal Issues

  1. 1 Whether the claimant's trade marks (shapes of London taxis) are validly registered under UK and Community law
  2. 2 Whether the defendants' new Metrocab infringes the claimant's trade marks under Article 9(1)(b) and (c) of the Regulation and Article 5(1)(b) and (2) of the Directive
  3. 3 Whether the claimant's trade marks have acquired distinctive character

Ratio Decidendi

The claimant's trade marks were devoid of inherent distinctive character and had not acquired distinctive character by the relevant date. Both marks consist exclusively of the shape which gives substantial value to the goods and are invalid. The Community trade mark was not put to genuine use. The defendants' new Metrocab does not infringe the trade marks, as there is no likelihood of confusion, no reputation, and no unfair advantage or detriment. The honest practices defence would apply if necessary. The passing off claim fails as the relevant public does not rely on the shape as denoting trade origin.

Court Disposition

Claim dismissed

Orders

  • Both trade marks declared invalid in respect of goods in Class 12 for lack of distinctive character and because they consist exclusively of a shape giving substantial value to the goods.
  • Community trade mark revoked for non-use with effect from 2 May 2014.