JUrISdIctIOn repOrt: UK
SHApe AS A trAdemArK
emma tuck
Browne Jacobson
The UK Court of Appeal has dismissed an appeal by Whirlpool in Whirlpool
"KenWOOd HAd ItS OWn pre-exIStInG
Corporation v. Kenwood Limited, a case that dealt with the alleged infringement
by Kenwood’s new stand mixer of Whirlpool’s Community Trade Mark.
repUtAtIOn And dId nOt HAVe tHe 'Intent'
...tO rIde On tHe cOAt tAILS OF WHIrLpOOL’S
background
repUtAtIOn"
Whirlpool, a well-known manufacturer of kitchen equipment, manufactures
and sells the KitchenAid Artisan, a stand mixer with a ‘retro feel’. The
prohibits registration of a sign as a CTM if it consists exclusively of the shape
KitchenAid, sold in the UK since 1994, is regarded as being a particularly
of goods that results from the nature of the goods themselves, the shape
stylish, and even iconic, design.
of goods that is necessary to obtain a technical result, or a shape that gives
Whirlpool has a Community Trade Mark (CTM) for the shape of the
substantial value to those goods.
KitchenAid (excluding the mixing bowl) consisting of an outline of the mixer,
On appeal, Whirlpool said that the judge was misdirected to refer to this
which is described as “…a fanciful electric beating and mixing machine
article. The Court of Appeal disagreed. The judge was correct to find that
configuration upon which the word KitchenAid appears”.
Article 7(1)(e) was relevant to the assessment of whether there was a sufficient
In July 2007, Kenwood, another established manufacturer of kitchen
similarity between the CTM and the sign (the kMix), both being shapes. It
equipment, launched its kMix stand mixer. Whirlpool argued that the shape
was not a misdirection to note that the mark and the sign both consisted of
of the kMix infringed its CTM. It also made a claim of passing-off.
the shape of the product itself and that the shape of the KitchenAid, whilst
having some distinctiveness, did not have any “fanciful or capricious element
Article 9.1(b) of the Regulation on the Community Trade Mark (the
as a distinguishing feature”.
Regulation) provides that the proprietor of a CTM is entitled to prevent third
parties from using in the course of trade “any sign where because of its identity
The judge accepted that there was similarity and that this was sufficient
or similarity…and the identity or similarity of the goods or services…there
to establish a link, but decided that “it would be excessive…to apply the
exists a likelihood of confusion”.
concepts of ‘free-riding’, ‘blurring’, ‘tarnishment’ or ‘dilution’ more generally
so as to hold that the bodywork of the kMix was too close…for the purposes
Article 9.1(c) entitles the CTM proprietor to prevent the use of “any sign
of Article 9(1)(c)”.
identical or similar to the CTM in relation to goods or services which are
not similar to those for which the CTM is registered, where the latter has a
The Court of Appeal decided that this meant no more than that the relevant
reputation in the Community and where use of that sign without due cause
concepts cannot properly be applied so generally as to find that the shape of
takes unfair advantage of, or is detrimental to, the distinctive character or
the kMix is so close to that of the CTM as to offend against the article. The
the repute of the CTM”. It has been established that Article 9.1(c) should also
judge had not applied a narrower test.
apply where the goods or services are identical or similar to those for which
the CTM is registered. Final comment
At first instance, the High Court rejected Whirlpool’s claims. Although there The Court of Appeal gave consideration to L’Oreal v. Bellure (reported in
was sufficient similarity between the KitchenAid and the kMix for the one WIPR July/August 2009), but noted that the commercial circumstances were
mixer to remind the average consumer of the other, the average consumer different. Whirlpool had, until the arrival of the kMix, a monopoly in the
would not be confused into mistaking one mixer for the other and, therefore, high-end sector of the mixer market. Kenwood would inevitably have had
there could be no likelihood of confusion as required by Article 9.1(b), the knowledge of the kMix. This was “not in itself sinister”. Kenwood had its own
court said. The similarity was enough to establish a link between the two pre-existing reputation and did not have the “intent” (as Bellure had shown)
marks for the purposes of Article 9.1(c), but the court concluded that there to ride on the coat tails of Whirlpool’s reputation.
was no effect upon the “distinctive character and repute of the trade mark”.
Whirlpool’s appeal
Emma Tuck is an associate in the intellectual property team at Browne
On the question of similarity, the judge had considered Article 7(1)(e), which Jacobson LLP. She can be contacted at: etuck@brownejacobson.com
www.worldipreview.com World Intellectual property review September/October 2009 75
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