Whirlpool Corporation and Others v Kenwood Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Lloyd,Lord Justice Wilson,Lord Justice Rix |
| Judgment Date | 23 July 2009 |
| Neutral Citation | [2009] EWCA Civ 753 |
| Docket Number | Case No: A3 2008/2419 |
| Court | Court of Appeal (Civil Division) |
| Date | 23 July 2009 |
[2009] EWCA Civ 753
Lord Justice Rix
lord Justice Lloyd and
lord Justice Wilson
Case No: A3 2008/2419
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
COMMUNITY TRADE MARK COURT
INTELLECTUAL PROPERTY
MR GEOFFREY HOBBS Q.C.
Royal Courts of Justice
Strand, London, WC2A 2LL
James Mellor Q.C. and Thomas Moody-Stuart
(instructed by Lewis Silkin LLP ) for the Appellants
Iain Purvis Q.C. Andrew Lykiardopoulos and Iona Berkeley
(instructed by Field Fisher Waterhouse LLP ) for the Respondent
Hearing dates: 1 to 3 April 2009
Lord Justice Lloyd:
Introduction
The Claimants produce and sell kitchen equipment, including a stand mixer called the KitchenAid Artisan. This item has been made and sold in the United States since the 1930's, with very little change in the design. It has been introduced to the European market, including the UK, over the past 15 years or so. The KitchenAid Artisan is sold for £300 or more. In 2007 the Defendant, Kenwood, started selling a rival product of its own, called the kMix, which is also a stand mixer, and also sells for £300 or more. By these proceedings the Claimants seek to prevent sales of the kMix, unless it is adapted so as to be differentiated clearly from the KitchenAid Artisan. They relied at trial on trade mark infringement, on two different bases, and on passing-off. The claim came to trial before Mr Geoffrey Hobbs Q.C., sitting as a Deputy Judge of the High Court, in May 2008. By his judgment handed down on 4 August 2008, [2008] EWHC 1930 (Ch), he dismissed all three claims. The appeal is against the dismissal of one of the trade mark infringement claims.
The Claimants, to whom I will refer as Whirlpool (there being no need to distinguish among them), have the benefit of a Community Trade Mark (CTM), number 2, 174, 761, in Class 7: electric beating and mixing machines and attachments for such machines. The registered description of the mark is as follows:
“The mark consists of a fanciful electric beating and mixing machine configuration upon which the word KitchenAid appears.”
The graphic representation of the mark shows an outline of the mixer viewed from three different angles, thus:
Because the trade mark is registered under the Community system, its incidents are defined by Council Regulation 40/94 of December 20 1993, on the Community trade mark (the CTMR). The rights conferred by a CTM are set out in article 9. The appeal arises under article 9(1)(c), but it is convenient that I set out the whole of article 9.1:
“1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.”
The sign complained of is the shape of the kMix. Thus, although the goods for which the CTM is registered are the same as to those for which the sign complained of is used, the sign is not identical, so paragraph (a) does not apply. The judge held that there was no likelihood of confusion on the part of the public, and therefore rejected the claim based on paragraph (b). On the face of paragraph (c) it does not apply, because of the identity of the goods for which the CTM is registered with those for which the sign is used, but in Davidoff & Cie SA v Gofkid Ltd Case C-292/00 [2003] 1 W.L.R. 1714, the European Court of Justice held that the equivalent provision in the First Council Directive 89/104 on trade marks (article 5(2)) extends not only to the case of dissimilar goods or services but also to cases where the sign in question is used for goods or services identical or similar to those covered by the registered mark. The same applies under the CTMR.
Thus, Whirlpool had to prove that the CTM had a reputation in the Community, that the sign used by the Defendant in relation to the kMix was similar to the CTM, and that the Defendant's use of that sign (without due cause) took unfair advantage of, or was detrimental to, the distinctive character or the repute of the CTM.
The judge said that, as between the shapes of the two mixers, there was “clearly enough similarity for each to remind people of the other”, but not to lead the average consumer to think that one is the other, whether seen together or separately. The judge accepted that the appearance of the kMix was a “sign”, but rejected the case based on a likelihood of confusion as to trade origin.
In relation to the issue of similarity, sufficient for the purposes of article 9(1)(c), the application of the article to the case of similar goods and services has been held by the ECJ to be legitimate if the degree of similarity between the mark with a reputation and the sign has the effect that the relevant section of the public establishes a link between the sign and the mark: see Adidas AG v Marca Mode II Case C-102/07 paragraph 41. The judge held that it was sufficient to establish such a link that the one product called the other to the mind of the average consumer. However, he rejected the claim by Whirlpool that the link would result in the kMix taking unfair advantage of the CTM, and that it would be detrimental to the distinctive character or repute of the CTM.
Whirlpool contend that the judge made two errors of law in coming to this last conclusion, and that it can be seen that, but for those errors, he would and must have decided in their favour. Kenwood deny any error of law on the part of the judge in this respect, but submit by a Respondent's Notice that others of his conclusions unfavourable to them were not justified. In resolving the issues so arising, we were assisted by written and oral submissions of conspicuous ability on both sides, for which I am grateful.
The facts in outline
The KitchenAid Artisan as now sold is substantially similar in its design to a product originally introduced in the US in 1937 and then protected by a US design patent. Whirlpool acquired the KitchenAid business in 1985. The mixer has been called the Artisan since about 2004. It is part of a range of kitchen appliance products. (There may therefore be other items which are known as KitchenAid Artisan, but when I use that phrase in this judgment I refer only to the stand mixer.) There may have been sales of the KitchenAid Artisan in the UK before 1994, but hard evidence of sales is only available from that date, with sales since then also in France and Germany, and to a lesser extent in Italy, the Netherlands, Austria and Belgium. Promotion of the KitchenAid Artisan has been through in-store, point of sale, online and public relations promotions rather than by paid-for press or television advertising. The judge said in paragraph 29 that he was satisfied:
“that Whirlpool's promotional efforts resulted in good levels of public awareness among such consumers in the United Kingdom (and, I would accept, in France and Germany).”
To take a particular example of such promotions, in a series on Christmas cooking broadcast by BBC Television in December 2006 and again in 2007, the KitchenAid Artisan featured as the mixer of choice of the celebrity chef Nigella Lawson.
Examples of the KitchenAid Artisan have been or are to be seen in museums as an example of good design. It has been described as a classic design icon of the 20 th century. A liking for the design is seen as a major factor in the appeal of the product to potential consumers. The judge quoted from a report commissioned by Kenwood as to customer perceptions:
“Kitchen Aid consumers love the design of their machine. They view it as a statement of them and their stylish, discerning lifestyle. A piece of equipment to show off.”
Kenwood is known as a major manufacturer of kitchen appliances sold in the UK and elsewhere. Until the introduction of the kMix, however, Kenwood did not sell a mixer characterised by a high standard of design and a correspondingly high retail price, as the KitchenAid Artisan is. Kenwood had a large share of the UK market for kitchen appliances, including for mixers, but Whirlpool's sales were proportionately higher in terms of value than as regards units. The judge referred to the respective figures in the UK market for the three years 2004 to 2006 being accepted to be roughly that Kenwood's sales were 70%, 70% and 75% of the market by volume, to Whirlpool's 29%, 25% and 25%, whereas Kenwood's share by value was 68%, 64% and 61% to Whirlpool's 31%, 34% and 38%. Mixers of other brands...
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