The London Taxi Corporation Ltd trading as the London Taxi Company v Frazer-Nash Research Ltd and Another

JurisdictionEngland & Wales
CourtChancery Division
JudgeThe Hon Mr Justice Arnold
Judgment Date20 Jan 2016
Neutral Citation[2016] EWHC 52 (Ch)
Docket NumberCase No: HC-2014-002085

[2016] EWHC 52 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Rolls Building

Fetter Lane, London EC4A 1NLL

Before:

The Hon Mr Justice Arnold

Case No: HC-2014-002085

Between:
The London Taxi Corporation Limited trading as the London Taxi Company
Claimant
and
(1) Frazer-Nash Research Limited
(2) Ecotive Limited
Defendants

Douglas Campbell (instructed by Browne Jacobson LLP) for the Claimant Mark Platts-Mills QC and Philip Roberts (instructed by Berwin Leighton Paisner LLP) for the Defendants

Hearing dates: 17–20, 23 November 2015

MR JUSTICE ARNOLD

MR JUSTICE ARNOLD:

Contents

Topic

Paragraphs

Introduction

1–5

The Fairway, TX1, TXII and TX4

6–9

The Trade Marks

10–12

The new Metrocab

13–14

The witnesses

15–26

LTC's witnesses

15–21

The Defendants' witnesses

22–26

General factual background

27–75

Terminology

28–30

A brief history of London taxis

31–57

Factors affecting drivers' choices of taxi models

58–59

Legal and regulatory requirements for London taxis

60–64

The attitude of the PCO, TfL and Mayor of London to the design of London taxis

65–68

The Mayor of London's Air Quality Strategy

69–71

Private hire vehicles

72–75

LTC's conventional trade marks

76–77

Reception of the Vito by drivers and passengers

78–81

The design of the new Metrocab

82–140

Promotion of the new Metrocab

141–143

Trial of the new Metrocab

144–145

Production of the new Metrocab

146

Do the Defendants intend to deceive the Public?

147–148

Potential collaboration between LTI and FNR in 2005

149

The design of the TX5

150–154

The incident involving Mr Zeghibe

155

Key legislative provisions

156–158

The average consumer

159–163

The law

159

The average consumer in the present case

160–163

Validity of the Trade Marks: distinctive character

164–208

Inherent distinctive character

165–172

The relevant date

173

Assessment: the CTM

174

Assessment: the UKTM

175

Acquired distinctive character

176–195

The law

176–178

The relevant date

179

Assessment

180–181

The market share held by goods bearing the mark

182

How intense, geographically widespread and longstanding the use of the mark has been

183

The amount invested by the proprietor in promoting the mark

184–187

Evidence from trade and professional associations

188

Opinion polls

189

The proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor

190

Overall

191

LTC's case with respect to consumers of taxi services

192–194

Conclusion

195

Validity of the Trade Marks: substantial value

196–215

The law

197–209

The relevant date

210

Assessment

211

The UKTM

212–214

The CTM

215

Revocation of the CTM

216–239

Use of the CTM itself

217

The law with respect to genuine use

217–219

The law with respect to sales of used (i.e second-hand) goods

220–226

The law with respect to genuine use in the Community

227–230

LTC's evidence of use

231

Assessment

232–234

Use of the CTM in a form differing in elements which do not alter its distinctive character

236

The law

236

Assessment

237–238

Conclusion

239

Conversion of the CTM

240

Relevant date for assessment of the issues on infringement of the Trade Marks

241

Approach to the issues on infringement

242

Infringement of the Trade Marks under Article 9(1)(b)/

243–262

Article 5(1)(b)

The law

243–245

Assessment

246

The average consumer

247–248

The distinctive character of the Trade Marks

249

Comparison of goods

250

Comparison of signs

251–259

Has there been actual confusion?

260–261

Overall assessment

262

Infringement of the Trade Marks under Article 9(1)(c)/Article 5(2)

263–269

The law

263

Assessment

264

Reputation of the Trade Marks

264

Link

265

Detriment to the distinctive character of the Trade Marks

266

Unfair advantage

267

Due cause

228

Conclusion

269

Defence under Article 12(b)/Article 6(1)(b)

270–283

Characteristics

271

Honest practices in industrial and commercial matters

272–293

Whether the defendant knew of the existence of the trade mark

273

Whether the defendant used the sign complained of in reliance on competent legal advice

274

The nature of the use complained of

275

Whether the defendant knew that the trade mark owner objected to the use of the sign complained of

276

Whether the defendant knew, or should have appreciated, that there was a likelihood of confusion

277

Whether there has been actual confusion, and if so whether the defendant knew this

278

Whether the trade mark has a reputation, and if so whether the defendant knew this

279

Whether the defendant's use of the sign complained of interferes with the owner's ability to exploit the trade mark

280

Whether the defendant has a sufficient

281

justification for using the sign complained of

281

The timing of the complaint from the trade mark owner

282

Conclusion

283

Passing off

284–298

The law

284–303

Assessment

291–298

Goodwill

292–295

Misrepresentation

296

Damage

297

Conclusion

298

Summary of principal conclusions

299

Introduction

1

This is a claim for trade mark infringement and passing off. The Claimant ("LTC") is the successor in title to the manufacturer of the Fairway, TX1, TXII and TX4 models of London taxi. The Defendants are the successors in title to the manufacturer of the Beardmore, Oxford and Metrocab models of London taxi. LTC owns trade mark registrations for the shapes of the Fairway and of the TX1/TXII respectively ("the Trade Marks") and claims goodwill in the shapes of all four models. It alleges that the Defendants threaten to infringe the Trade Marks and to commit passing off by marketing a new model of London taxi referred to as the new Metrocab which is currently being trialled. (Strictly speaking, it is the Second Defendant ("Ecotive") which threatens to do this, while the First Defendant ("FNR") will supply parts for the new Metrocab, and in particular the powertrain; but nothing turns on this.)

2

LTC's complaint concerns the shape of the Defendants' taxi, which it contends has been substantially copied from the shape of the TX4, yet it advances no claim for infringement of any registered design, design right or copyright. Furthermore, LTC alleges that the Defendants intend to deceive the public as to the origin of the new Metrocab by adopting a shape which closely resembles that of LTC's models, which is an allegation of fraud. Unsurprisingly, these allegations have increased the temperature, as well as the duration and expense, of the dispute.

3

LTC claims infringement of the Trade Marks on three alternative bases as well as passing off. The Defendants deny trade mark infringement and passing off. Furthermore, they contend that the Trade Marks are invalidly registered because they lack distinctive character and add substantial value to the goods. In the alternative the Defendants contend that the CTM should be revoked for non-use. LTC relies upon acquired distinctive character and disputes the allegation of non-use on two different bases. As a result, a considerable number of issues have been raised for decision.

4

Although counsel for LTC addressed passing off first in his submissions, I have found it more convenient in this judgment to consider the issues in the conventional order, which involves dealing with the trade mark issues first.

5

I had the advantage of being able to inspect examples of the Fairway, TX1, TXII, TX4 and new Metrocab side by side during the trial. This assisted me to understand some of the evidence, but I have borne in mind that, as explained below, the side-by side comparison is not the one that matters for the purposes of trade mark infringement or passing off.

The Fairway, TX1, TXII and TX4

6

The Fairway is shown below:

7

The TX1 is shown below:

8

The exterior appearance of the TXII was essentially the same as that of the TXI.

9

The TX4 is shown below:

The Trade Marks

10

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 specification of the CTM also extends to goods in Classes 6, 16, 18, 21 and 28, but they are not in issue. The CTM is a three-dimensional trade mark represented as follows:

11

LTC is also the registered proprietor of 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"). The UKTM is a three-dimensional trade mark represented as follows:

12

The same six representations also form the subject-matter of LTC's UK Registered Design No.2069313, which is not relied upon by LTC in these proceedings.

The new Metrocab

13

The new Metrocab is shown below:

14

The new Metrocab is shown next to a TX4 below:

The witnesses

LTC's witnesses

15

LTC adduced evidence from 12 witnesses, who can be grouped into four categories, as follows.

16

First, LTC internal witnesses:

i) Peter Johansen is the Chief Executive Officer of LTC, but has only been involved in the business since 2012. He was LTC's principal witness in support of the claim to goodwill in the shape of the LTC taxis, which he did primarily by exhibiting a wide range of documentary evidence. He also gave evidence as to the use of the CTM based on LTC's records.

ii) Paul Woolley is the Chief Operations...

To continue reading

Request your trial
14 cases
  • Abanka D.D v Abanca Corporación Bancaria S.A.
    • United Kingdom
    • Chancery Division
    • 6 October 2017
    ...the relevant principles from The London Taxi Corporation Ltd (t/a The London Taxi Company) v. Fraser-Nash Research Ltd & another [2016] EWHC 52 (Ch) at [217]–[219] as follows: "217. In Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch), [2013] FSR 35 I set out at [51] a helpful......
  • Pathway IP Sarl (formerly Regus No. 2 Sarl) v Easygroup Ltd (formerly Easygroup IP Licensing Ltd)
    • United Kingdom
    • Chancery Division
    • 21 December 2018
    ...is sufficient to refer to the summary provided by Arnold J in The London Taxi Corp Ltd (t/a London Taxi Co) v Frazer-Nash Research Ltd [2016] EWHC 52 (Ch); [2016] FSR 20 (“the London Taxi case”), at [217] – [219], whose judgment was affirmed on appeal. This summary was recently applied by ......
  • W3 Ltd v Easygroup Ltd
    • United Kingdom
    • Chancery Division
    • 12 January 2018
    ...there has been genuine use of a trade mark established by the case law of the CJEU in London Taxi Corp v Frazer-Nash Research Ltd [2016] EWHC 52 (Ch), [2016] ETMR 18 at [219] in a manner which was not criticised on appeal as follows (citations omitted): “(1) Genuine use means actual use of ......
  • Crocodile International Pte Ltd v Lacoste
    • New Zealand
    • Supreme Court
    • 21 February 2017
    ...and Budweiser Budbräu Trade Marks, above n 29, at [47]. 37 At [47]. 38 At [47]. 39The London Taxi Corp Ltd v Frazer-Nash Research Ltd [2016] EWHC 52 (Ch), [2016] FSR 20 [ London Taxis] at 40 See Lacoste (CA), above n 6, at [12]. 41Re Registered Trade Mark Nos 365200, 1199776 and 1384452 UK ......
  • Request a trial to view additional results
3 firm's commentaries
  • Brexit and your EU trade marks – time for an IP audit
    • United Kingdom
    • JD Supra United Kingdom
    • 11 May 2017
    ...29 June 2015 2) See, for example, The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd & Anor [2016] EWHC 52 (Ch), and Appointed Person Decision O/222/16 in the matter of Nike Innovate CV and Intermar 3) Leno Merken BV v Hagelkruis Beheer BV, C-149/11......
  • GAP's Unused Trade Mark Advantageous In Opposing Third Party Application
    • United Kingdom
    • Mondaq UK
    • 9 May 2016
    ...the public, the 'average consumer' included members of the public. It is noteworthy that in The London Taxi Corporation v Frazer-Nash [2016] EWHC 52 (Ch), Arnold J reached the opposite conclusion. He accepted that there was authority for end users of goods being relevant consumers, but in t......
  • When are shapes sufficiently distinctive to function as trade marks?
    • United Kingdom
    • LexBlog United Kingdom
    • 28 January 2016
    ...high a bar to clear. London Taxi The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd and another [2016] EWHC 52 (Ch), 20 January 2016 In the first High Court Decision, Mr. Justice Arnold, concluded that the shape of the traditional London taxi was not su......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT