LTC is the registered proprietor of Community Trade Mark No. 951871 registered as of 5 October 1998 in respect of “motor vehicles, accessories for motor vehicles; parts and fittings for the aforesaid” in Class 12 (“the CTM”) the relevant class.
It also owns United Kingdom Trade Mark No. 2440659 registered as of 1 December 2006 in respect of “cars; cars, all being taxis” in Class 12 (“the UKTM”).
Mr Justice Arnold found as follows:-
i) both of the Trade Marks were devoid of inherent distinctive character in relation to goods in Class 12 at the respective dates of application;
ii) neither of the Trade Marks had acquired a distinctive character in respect of goods in Class 12 by the date of the counterclaim;
iii) both of the Trade Marks should be declared invalid in respect of goods in Class 12 on the ground that they consist exclusively of the shape which gives substantial value to the goods;
iv) the CTM should be revoked for non-use in respect of goods in Class 12 with effect from 2 May 2014;
v) the Defendants have not infringed either of the Trade Marks pursuant to Article 9(1)(b) of the Regulation and Article 5(1)(b) of the Directive;
vi) the Defendants have not infringed either of the Trade Marks pursuant to Article 9(1)(c) of the Regulation and Article 5(2) of the Directive;
vii) the Defendants would if necessary have a defence to the infringement claim under Article 12(b) of the Regulation and Article 6(1)(b) of the Directive; and
viii) the claim for passing off fails.
This case highlights how tricky it is to rely on three dimensional marks but surely it was crying out for a registered design?