Whirlpool Corporation and Others v Kenwood Ltd

JurisdictionEngland & Wales
CourtChancery Division
Judgment Date04 Aug 2008
Neutral Citation[2008] EWHC 1930 (Ch)
Docket NumberCase No: HC07C02299

[2004] EWHC 1930 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

COMMUNITY TRADE MARK COURT

INTELLECTUAL PROPERTY

Royal Courts of Justice

Strand,

London, WC2A 2LL

Before:

MR. GEOFFREY HOBBS Q.C (Sitting as a Deputy High Court Judge)

Case No: HC07C02299

Between:
(1) Whirlpool Corporation (a Company Existing Under The Laws Of Delaware, United States Of America)
(2) Whirlpool Properties Inc (a Company Existing Under The Laws Of Michigan, United States Of America)
(3) Kitchenaid Europa Inc. (a Company Existing Under The Laws Of Delaware, United States Of America)
Claimants
and
Kenwood Limited
Defendant

Mr. James Mellor QC and Mr. Thomas Moody-Stuart (instructed by Lewis Silkin LLP) for the Claimants

Mr. Iain Purvis QC, Mr. Andrew Lykiardopoulos and Ms. Iona Berkeley (instructed by Dechert LLP) for the Defendant

Hearing dates: 7 to 9 and 12 to 16 May 2008

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

1

The claimants in these proceedings are members of the Whirlpool group of companies. They are Whirlpool Corporation (a Delaware company responsible for manufacturing KitchenAid products under licence from Whirlpool Properties Inc); (2) Whirlpool Properties Inc. (a Michigan company responsible for the protection and licensing of Whirlpool Group intellectual property rights); and (3) KitchenAid Europa Inc. (a Delaware company responsible for sales and marketing of KitchenAid products throughout the EEA). It is generally unnecessary to distinguish between them for the purposes of the claims they have made against the defendant, Kenwood Ltd. Except where there is a particular need to be more specific, I shall refer to them collectively as 'Whirlpool'. I shall refer to the defendant simply as 'Kenwood'.

2

The ultimate question in the action is whether Whirlpool is entitled, either on the basis of the rights conferred by registration of Community trade mark number 2, 174, 761 or on the basis of the law relating to passing off, to prevent Kenwood from marketing stand mixers having the shape and appearance of its kMix mixer launched in July 2007. No claim was advanced under the provisions of Section 56 of the Trade Marks Act 1994 relating to the protection of well-known marks.

3

In its pleadings Kenwood raised a counterclaim for invalidity of the Community trade mark registration upon the premise that there would be invalidity for lack of distinctiveness if there was similarity sufficient to support a finding of infringement. However, this backwards to forwards reasoning disclosed no sustainable basis for declaring the registration invalid under Articles 92(d), 96 and 97(3) of Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark ('the CTMR'). First, it apparently conceded that the registration would be valid and infringed by use of a trade mark identical to the registered mark. Second, it apparently conceded that the registration should be presumed valid pending determination of the question of liability for infringement, even though there could be no liability for infringement if the trade mark was invalidly registered. Third, it ran counter to the established principle that the grounds for refusal of registration should be applied independently of the defences that might be available to traders accused of infringement 1. Whirlpool rightly regarded the counterclaim as insufficient hence ineffective to displace the presumption of validity under Article 95 CTMR. In the end, Kenwood decided not to dispute the validity of the registration in suit.

4

The kMix mixer is marketed in the United Kingdom and other Member States. There are two points arising out of that which need to be mentioned at this juncture.First, Whirlpool is claiming a Community-wide injunction under Articles 94(1) and 98(1) CTMR. There are unresolved issues as to whether those Articles permit or require a Community Trade Mark Court designated under Article 91 CTMR to grant an injunction covering areas of the Community which cannot, on the basis of the evidence before the court, be positively identified as areas in which the defendant's activities would satisfy the requirements for a finding of liability under Article 9 CTMR 2. It is anticipated that the ECJ will, in the near future, provide guidance on that point. 3 In the meantime I simply record that the evidence before me concentrated on the position in the marketplace in the United Kingdom and to a much lesser extent in France and Germany, with the position elsewhere in the Community being for all practical purposes left unexplained. The second point is that in relation to trading activities extending across national boundaries within the EU, a claim for passing off no less than a claim for trade mark

infringement should be resolved by reference to the presumed expectations of the average consumer of the goods or services concerned, who must for that purpose be taken to be reasonably well-informed and reasonably observant and circumspect. 4 This was common ground between the parties at the hearing before me. 5
5

The aim of both claims is to compel Kenwood to further differentiate the shape and appearance of its kMix mixers from the shape and appearance of Whirlpool's KitchenAid Artisan mixers. This is a KitchenAid Artisan mixer:

The images are of a mixer in Empire Red, shown achromatically. The mixers are available in a variety of rich colours, the most popular in recent years having been red, almond and white. They are also available in an all-metallic finish. On the evidence before me it is clear that the selection of colour (or an all-metallic finish) is made with care by purchasers buying for domestic use. People buy these mixers for their style and presentation as well as for their functional qualities.

6

This is a Kenwood kMix mixer:

The images are of a mixer in Raspberry, shown achromatically. The mixers are available in other colours including almond and white.

7

The evolution of the design of the kMix was examined at some length in the evidence at trial. There was and remains no allegation by Whirlpool that the kMix was actually designed to deceive or mislead people. The suggestion is that there was a miscalculation as to what would be an acceptable design to adopt. I accept that this is a matter that can properly be looked into. On looking into it, I find that the kMix is indeed what it appears to be. It is the means by which Kenwood intended to move into the premium price sector of the market occupied by the Artisan mixer and make sales to design conscious consumers as best they could by matching the KitchenAid offer. Kenwood undoubtedly had the KitchenAid Artisan mixer in its sights at all material stages of the process leading up to the finalisation of the design of the kMix. Those involved in the process were in varying degrees sensitive about the parallels between the design proposals they were considering and the design of the Artisan mixer. That, in itself, is not sinister. I will, however, say that one of the proposals should have been seen as so clearly inappropriate as to require it to be excluded from consideration without a second thought. I am referring to the proposal which would, if adopted, have led to the kMix having a nose-like attachment hub protruding from the front of the mixer head in the same way as the attachment hub on the mixer head of the Artisan. It also appears to me that there was colour matching, with the red and almond colours used for the kMix being brought up tight against the red and almond of the Artisan. Whilst the KENWOOD branding beneath the dial could easily have been larger, I do not regard it as inappropriately small. In my view there was a calculated decision to proceed with the finalised design of the kMix in the sense only that it was thought to be an acceptable design with which to compete head on with the KitchenAid mixer. It was not, on the evidence before me, chosen for that purpose by reason of any anticipated propensity to deceive or mislead.

8

This is the registered representation of Community trade mark number 2,174,761:

At this point, it is relevant to recall that the graphic representation of a mark should be clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective. 6 This gives effect to the requirement for legal certainty. The graphic representation is expected to be definitive as to the identity of the protected mark, withthat being taken to consist only of the particular features which have actually been recorded in the register. 7

9

Colour is not an element of the mark as registered. The claim for infringement necessarily relates to what I shall call the bodywork of the unitary mixer head and stand recorded in the registered representation, irrespective of the finished appearance of the mixers which actually embody it. By contrast, the claim for passing off relates to the finished appearance of the Artisan mixer as a whole. The registered trade mark is to that extent a disaggregation of features that are, in fact, integral to the overall get-up of the mixers as marketed. The claim for infringement and the claim in passing off are thus made from different (albeit related) vantage points. They should, in my view, be recognised for what they are: separate prongs of a two-pronged attack. I am reinforced in

my unwillingness to unify the two claims by the need to pay particular attention to the content of the Community trade mark registration for the reasons to which I now turn
10

An application to register a three-dimensional shape as (or as part of) a Community trade mark must comply with the requirements of Rule 3 of the Regulation implementing the CTMR 8:

Representation of the mark

(1) If the applicant does not wish to claim any...

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