‘Not distinctive’ ruling against London Black cab by Arnold J
Written by Ellis Sweetenham on 18 February 2016« Return to Reading Room
The London Taxi Company who holds the registered trade marks that protect the shapes of the well-known London black cab models TX4, TXII and the TX1, came under fire after the marks were revoked during an infringement claim that they had instigated.
The LTC argued that the three marks above as well as another mark they have registered for a model of taxi known as the ‘Fairway’ which is no longer being manufactured, were infringed by Frazer- Nash Research Ltd during the creation and manufacture of a similar model, known as the Metrocab.
The defendants counter claimed stating that the mark ‘Fairway’ owned by the LTC was invalid as it lacked distinctive character.
This case was considered by Mr Justice Arnold in the High Court who argued in favour of the defendants and rendered all marks in relation to the taxi shapes invalid. He deemed them lacking in ‘distinctive character’. His reasoning for this was he could see nothing to suggest that the average consumer would perceive the marks as anything other than a variation of a standard shape. Therefore as these marks had been registered in error, there could be no case for infringement.
Furthermore, for completeness, Arnold also considered whether the mark registered for ‘Fairway’ should be revoked for non-use, if it was not already rendered invalid. As the shape for which the mark represents has not been manufactured in since 1997 and can only now be purchased second hand, the goods were only being re-circulated which is not enough to show proper use of the mark. This would therefore lead to the revocation of the mark for non-use if it had not already been rendered invalid for a lack of distinctiveness.
The London Taxi Company began proceedings with high hopes of succeeding in a claim for trade mark infringement but in the end, they finished proceeding without their trade marks and lacking protection over the shapes of their taxis.
This is an example that highlights the perils of protecting your IP rights, you may end up without any by the end of proceedings.
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