London Taxi Corporation Ltd (trading as the London Taxi

Case Overview

Case Title

  • London Taxi Corporation Ltd v Frazer-Nash Research Ltd and Another

  • Citation: [2017] EWCA Civ 1729

Court

  • Court of Appeal, Civil Division

  • Judgment Date: 1 November 2017

Parties Involved

  • Appellant (Claimant): London Taxi Corporation Ltd (trading as the London Taxi Company)

  • Respondents: Frazer-Nash Research Ltd and Ecotive Ltd

Counsel

  • Appellant: Douglas Campbell QC (Browne Jacobson LLP)

  • Respondents: Mark Platts-Mills QC, Maxwell Keay (Berwin Leighton Paisner LLP)

Legal Questions

  1. Is the shape of a London taxi a valid registered trade mark?

  2. Did the respondents infringe the appellant's registered trade marks?

  3. Was the claim founded on the common law tort of passing off valid?

Background

Claimant's Position

  • LTC claims that it holds rights in the shapes of London taxis, asserting that the new Metrocab model infringes its registered trade marks.

  • LTC is the successor of the manufacturer of various models: Fairway, TX1, TXII, and TX4.

  • The case involved the assessment of two registered marks held by LTC: a Community Trade Mark (CTM) and a United Kingdom Trade Mark (UKTM).

Respondents' Position

  • FNR and Ecotive, successors of Metrocab manufacturers, are developing a new taxi model which LTC argues infringes its trade marks.

  • The respondents contend that LTC's marks are invalid and that they do not constitute infringement.

Court's Judgement

Initial Findings

  • The trial judge determined that both of LTC's marks were invalid on multiple grounds:

    • The marks were found to be devoid of distinctive character.

    • The CTM was also subject to a revocation for non-use.

    • LTC's claims regarding passing off were rejected.

Discussion of Specific Legal Issues

  1. Average Consumer Perspective

    • The average consumer includes taxi drivers purchasing taxis, whereas passengers hiring taxis were not considered direct consumers of the goods in question.

    • Consumers of taxi services may have a lower level of investment in distinguishing the origin of the goods, focusing more on the service provided.

  2. Distinctive Character (Inherent and Acquired)

    • The court examined whether the shapes of the LTC's taxis significantly departed from norms of typical taxi shapes.

    • The court referenced past cases to establish whether the shapes possess inherent and/or acquired distinctive character. It concluded that LTC’s marks neither depart significantly from norms nor have acquired distinctive character through use.

  3. Revocation for Non-Use

    • The judge ruled on the revocation of the CTM for non-use, determining that the claims based on the sale of second-hand taxis didn't demonstrate the requisite 'genuine use' as required by law.

  4. Infringement Claims

    • The court addressed the likelihood of confusion under trade mark infringement laws, but since the marks were invalidated for lack of distinctiveness, the court viewed the infringement claims as moot.

    • It was noted that there were visible and substantial differences between LTC's taxis and the new Metrocab, which minimized any potential confusion.

  5. Passing Off

    • LTC's claim based on passing off was dismissed for similar reasons related to the lack of distinctive character in their marks and insufficient evidence of consumer confusion based on the design of the new Metrocab.

Conclusion

  • The appeal was dismissed as the court upheld the original judgement that LTC's trade marks were invalid due to lack of distinctive character and dismissed the passing off claim.

  • The court highlighted that promoting the uniqueness of a shape as a trademark for functional products poses inherent challenges, reaffirming the standards for registered trade marks under both UK and EU law.