Whirlpool
had sold a beating and mixing machine called the KitchenAid since
the 1930s in the US and in Europe in the past 15 years. It has a
European Community Trade Mark (CTM) for the shape of the machine
decorated with the word 'KitchenAid'.
Kenwood introduced the kMix machine to the market. It looked
very similar to Whirlpool's and Whirlpool sued, alleging that the
kMix infringed its trade mark rights.
The High Court said that though the machines looked similar
there was no likelihood of confusion in the mind of the relevant
consumer between them, so no trade mark infringement.
Whirlpool
appealed, claiming that the High Court had imposed stricter
conditions on its trade mark because it was a shape than it would
have done were it a word or an image. The basis of the appeal was
the trial judge's view that "in the realm of product shapes it
would be wrong to apply the concepts … as generally as they would
be applied as regards another kind of mark".
Lord Justice Lloyd in his ruling said that the judge had not
treated shape marks differently, and that it would have made no
difference to his verdict even if he had.
"In my judgment the judge did not go wrong in law because he did
not apply a different test for shapes from that which he would have
applied in relation to a different kind of mark," said the Court of
Appeal ruling. "On [the] evidence, and on his conclusion as to its
effect, I see no reason to suppose that he would have come to a
different result on any of the several different ways of putting
the claim."
Whirlpool also claimed that Kenwood obtained an unfair advantage
by the similarity between its machine and the trade marked shape of
the Whirlpool machine.
It said that a case decided recently by the European Court of
Justice involving cosmetics giant L'Oréal and smell-a-like
manufacturer Bellure bolstered its case. The Court disagreed.
"It seems to me that this case is a very long way away from
L'Oréal v Bellure," countered Lord Justice Lloyd. "Whirlpool did
not make any relevant allegation of intention in their pleaded
case. Kenwood could not have planned its entry into this sector of
the market, of which KitchenAid had until then had a monopoly,
without being very well aware at all times of the KitchenAid
Artisan. That in itself is not sinister (as the judge said), nor
does it amount to anything like what the alleged infringers did in
L'Oréal v Bellure."
"The kMix would remind relevant average consumers, who are
design-aware, of the KitchenAid Artisan. That, however, is a very
different phenomenon, in very different commercial circumstances,
from the situation considered in L'Oréal v Bellure. I find the
Court's judgment instructive, but it does not seem to me to lead to
the conclusion in favour of Whirlpool," he said.
The Court said that the similarity of shapes and any advantage
gained by that did not necessarily mean that Kenwood had broken the
law.
"It is not sufficient to show (even if Whirlpool could) that
Kenwood has obtained an advantage. There must be an added factor of
some kind for that advantage to be categorised as unfair," said Mr
Justice Lloyd. "It may be that, in a case in which advantage can be
proved, the unfairness of that advantage can be demonstrated by
something other than intention, which was what was shown in L'Oréal
v Bellure. No additional factor has been identified in this case
other than intention."
"Looking at the question of unfair advantage generally, it seems
to me that the judge was right to reject the case made on that
footing for two reasons: there was no advantage to Kenwood, and if,
to the contrary, there were, it was not an unfair advantage," he
ruled.
"In the L'Oréal case, it was clear that the defendants were
intending to take unfair advantage of L'Oreal's reputation, but
this couldn't be established in the Whirlpool case," said Alice
Williams, an intellectual property specialist at Pinsent Masons,
the law firm behind OUT-LAW.COM. "Kenwood entering the same market
as Whirlpool to sell a similar product is not deemed to be taking
unfair advantage."
Williams said that the ruling makes it clear how difficult it is
for companies to show that a rival has taken advantage of their
trade marks.
"Owners of well-known brands may find themselves in a position
of having difficulty in proving that unfair advantage has been
taken by a third party," she said. "The brand owners will have to
specify clear examples of an intention to take unfair
advantage."
Images of mixers are taken from the judgment and
reproduced for purpose of review.
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