Food mixer did not violate rival's trade mark by using similar shape

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.