INSIDE IP: SHAPE TRADE MARKS FOR LONDON BLACK CABS LACK DISTINCTIVE CHARACTER

INSIDE IP: SHAPE TRADE MARKS FOR LONDON BLACK CABS LACK DISTINCTIVE CHARACTER

Following its decision earlier this year that the shape of one of the UK’s best-selling chocolate bars, KitKat, did not have the necessary acquired distinctiveness to qualify for protection as a trade mark, the Court of Appeal has reached the same conclusion on the shape of another iconic UK product, the London black cab.

In a trade mark infringement dispute between LTC (the makers of the black cab) and the makers of the forthcoming hybrid electric taxi, the Metrocab, the court has decided that the features of the shape of the London cab (such as the slope of the windscreen, the deep/high bonnet and the extended front grille) do not depart significantly from the norms of the car sector.  As a result, LTC’s trade marks were cancelled as the shape marks lack inherent distinctive character.

Further, adverts on flip-up seats in the cabs advertising the name of the manufacturer were not enough to educate the consumer that the shape of the taxi indicated its origin. There must be evidence from which it can be deduced that a consumer understands there is only one manufacturer of products of that shape.

Whilst the case is a further reminder of the difficulties in registering shapes as trade marks (as opposed to obtaining design protection), it is possible that the case will go further to the Supreme Court. It raises a number of interesting issues, including the proper tests for assessing inherent distinctive character of shape marks, and whether a particular shape gives substantial value to the goods.

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