When is it better not to have a trade mark?
Yesterday the Court of Appeal for England and Wales (Lords Justices Rix, Lloyd and Wilson) gave its ruling in Whirlpool Corporation v Kenwood Ltd, [2009] EWCA Civ 753.
At issue in this dispute was the shape of Whirlpool’s retro-looking KitchenAid Artisan mixer and its rival, Kenwood’s kMix. The shape of the Artisan mixer was registered as a Community trade mark. Kenwood launched its kMix to be a rival product, intending to attract design-conscious consumers.
KitchenAid (left)
According to the trial judge, Geoffrey Hobbs QC, the average consumer for the purpose of establishing infringement could be taken to 
kMix (right)
Rejecting the claim that Kenwood's product infringed Whirlpool's Community trade mark, the judge held first that there was no likelihood of confusion and so no infringement under Art.9(1)(b) of Council Regulation 40/94 on the Community trade mark. While the kMix would be recognised as ‘KitchenAid-ish’, it would not be mistaken for a KitchenAid. There wasn’t even confusion of the ‘bait and switch kind’ (though Mr Hobbs QC expressed his belief that this would be actionable), whereby consumers would only realise that the kMix was not a KitchenAid after close examination. Moreover, a consumer who was about to spend upwards of £300 on a mixer would be unlikely to be under a misapprehension as to trade origin. This lack of confusion also meant that there was no misrepresentation for the purposes of passing off.
The kMix made a ‘non-verbal statement to the effect that the kMix is a mixer’. This being so, it was a sign, and Kenwood couldn’t argue that it wasn’t being used as a sign for the purposes of Arts 9(1)(b) and (c).
As for Art.9(1)(c), which addressed Whirlpool's claim that Kenwood's use if its shape took unfair advantage of, or was detrimental to the distinctive character or repute of the mark, the ‘mnemonic’ effect of the two marks meant that there was a ‘link’ between them. However, although it might affect its market share, the kMix would not affect the distinctive character or repute of the KitchenAid mark. In the words of Mr Hobbs QC, the KitchenAid was
‘distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for
the purposes of Article 9(1)(c).’
In giving judgment Goeffrey Hobbs QC indicated that Article 7(1)(e) of the Regulation had a role to play in the determination of the question of similarity. This might seem a somewhat surprising thing to say, since that provision deals with absolute bars to registration for
"signs which consist exclusively of
(i) the shape which results from the nature of the goods themselves; or
(ii) the shape of goods which is necessary to obtain a technical result; or
(iii) the shape which gives substantial value to the goods".
Whirlpool submitted that the judge had misdirected himself in referring to Article 7(1)(e) and that he had applied too narrow a test than he ought on the basis that the mark was a shape.
Above: two views of the Whirlpool Community trade mark
Dismissing the appeal, the Court of Appeal held as follows:
* Article 7(1)(e) of Regulation 40/94 did not apply to the registration of Whirlpool's mark because the mark included the brand name and did not consist exclusively of a shape. However, the judge did not err in applying Article 7(1)(e); what he had actually done was to state that the policy underlying that article was relevant to the assessment of whether there was a sufficient similarity for the purposes of Article 9(1)(c), both the mark and the sign being shapes.
* An assessment of similarity had to be carried out on a global basis by reference to the degree of similarity between the mark and the sign (here the Court cited Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd, noted here and here by the IPKat). This being so, the nature of the mark, the sign and their similarity had also to be relevant. It was, therefore, not a misdirection in itself for the judge to observe that the mark and the sign respectively consisted of the shape of the product itself and that, while Whirlpool's mixer had a somewhat distinctive shape, it did not involve any fanciful or capricious element as a distinguishing feature.
* Other than as sounding a warning note, it was not clear what effect the judge's observation on Article 7(1)(e) had on his actual decision.
* The judge did not apply a narrower test than he should have. Starting by recognising that the two product shapes had enough in common for the one to remind relevant average consumers of the other, while not causing confusion as to trade origin, he accepted that that was sufficient to amount to the necessary link. He then asked whether that link caused detriment or led to unfair advantage being taken of the mark's distinctive character or repute, finding that it did not. No loss of Whirlpool's market share was attributable to any damage to its trade mark and the similarity between the respective articles was insufficient to affect the distinctiveness of the mark. No 'blurring', 'dilution', 'tarnishing' or 'free-riding' had been made out. By saying those concepts were not to be applied "more generally", he only meant that they could not properly be applied so generally as to find that the shape of Kenwood's mixer was so close to that of the mark as to infringe under Article 9(1)(c) -- not that they were to be applied less generally where the mark and the sign were both product shapes.
* the facts here were a long way away from those considered by the Court of Appeal in L'Oreal SA v Bellure (see the IPKat note here), where the alleged infringers clearly intended to take advantage of the distinctive character and repute of the claimants' marks. Kenwood had its own established goodwill in kitchen appliances and did not need to ride on Whirlpool's coat-tails. Being a newcomer in a specialist market in which Whirlpool had a monopoly, and having the same basic shape as Whirlpool's mixer, Kenwood's mixer would remind average, design-aware customers of the claimants' product.
The IPKat is reserving judgment on the Court of Appeal's decision till he has had more time to reflect on it.
[Danger: IPKat rant alert] Turning from the logic of the Court's reasoning to wider issues, he does however have this to say: while conceding that he is not the relevant consumer of the litigated products, he really feels that this episode is a difficult one to comprehend. Here are two household items which, even after reading two sets of judgments and looking at the illustrations, he would be hard-pressed to tell apart and which he is certain he would not be able to distinguish from each other if they weren't both in front of him at the same time; here is a case in which it has been apparently proved that there is no likelihood of confusion between the product shapes and here is a Community trade mark for something that looks like the shape of an ordinary household appliance rather than a message that guarantees the identity of the origin of goods bearing that shape. In addition, this dispute has occupied eight days of court time at first instance plus a further three days before the Court of Appeal, not to mention the time spent writing up two extremely long judgments. The result is that Whirlpool is unable to stop a competitor coming into the market with a product that closely resembles its own. This same result could have been achieved far more cheaply and sensibly, for the benefit of both manufacturers, by doing the right thing in the first place and refusing 
Whirlpool's useless Community trade mark application.
Right: when search engines look for 'cat' and 'mixer' ...
Dangerous Whirlpools here and here
Kenwood heritage here
