Judge rules that neither KitKat shape or London black cabs constitute trademarks

In separate hearings, a high court judge, Mr Justice Arnold, has ruled against companies claiming trademarks in their products.  The first case involved KitKat, the chocolate bar made by Nestlé, the Swiss company.  The second involved London black cabs.

In the first case, Nestlé argued that the shape of KitKat amounted to a trademark, and could therefore be protected against those seeking to copy that shape. In his written ruling, Mr Justice Arnold said Nestlé had not promoted the chocolate bar’s shape as one of its selling points and had distributed it in an opaque wrapping that did not reveal its design. He wrote: “In these circumstances, it seems likely that consumers rely only on the word mark KitKat and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products.

“They associate the shape with KitKat (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The second case involved a dispute between the manufacturer of the traditional London taxi and the group behind a new eco-friendly cab, Metrocab. The two trademarks in question during the hearing related to three-dimensional drawings of the exterior of the typical black cab. The London Taxi Company had claimed the new Metrocab was “substantially copied” from the design of the TX4, the latest version of the hackney carriage.

Mr Justice Arnold ruled that the black cab is “devoid of inherent distinctive character”. He said that the taxis are “merely a variation of the typical shape of a car” and ruled that trademarks exclusively relating to its shape should be deemed invalid. The judge dismissed fraud allegations by the London Taxi Company as “deeply implausible” and said that even if the trademarks were valid then the Metrocab was not simply a copy of the TX4.

Peter Johansen, the chief executive of the London Taxi Company, said: “We are understandably disappointed by the judge’s ruling. We will review the ruling to determine our way forward.”

Nestlé said it would appeal against the ruling.

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