Author: Monika Alisauske, Lawyer
The famous Big Ben, Tower Bridge, red phone-booths and red double-deckers, and the black cabs zooming among them are what pops into your mind when you think of London – even if you have never been to the capital of the United Kingdom.
The classical London cab has been the most appreciated taxi in the world for over 100 years now. It is a symbol of London, the perfect reflection of the spirit of this cosmopolitan city.
That said, the Metrocab, the new type of cab allowed to roll out as a result of an Appellate Court judgement, will soon be making its appearance on the streets; but first things first.
It is a known fact that trademark law offers a possibility to protect shapes of goods as spatial trademarks. An excellent case in point is the registered shape of the Coca Cola bottle. However, compared to other types of trademarks, spatial trademark registration entails additional difficulty.
One of the biggest challenges that the owner of a spatial trademark filed for registration faces is that often the shape or image to be registered is the shape of the product that bears the mark. Nonetheless, trademark law offers protection only to trademarks that have some distinguishing features without identifying goods bearing them. Therefore, the shape of a product may be protected as a trademark when it is sufficiently original and different from the usual shape of similar goods. On the other hand, even when the shape of a product is registered as a spatial mark, the owner of the trademark cannot rest assured that in a dispute over the trademark they will enjoy undisputed protection and will be able to rely on the registration of the trademark in controversies with third parties.
An excellent example of this kind of situation is the argument over the aforementioned classical black London cab as a spatial trademark that has taken place in the UK recently.
On 1 December 2006 and on 28 February 2014, The London Taxi Corporation Limited successfully registered a 3D image of the London cab as spatial trademarks (https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002440659, https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003044623).
In 2016, The London Taxi Corporation Limited approached the court claiming that a competitor, Frazer-Nash Research Ltd., had copied the design of its black taxi vehicle, the London cab, and had used it for its own tax vehicle, the Metrocab. The London Taxi Corporation Limited grounded its claim on the fact that it believed the style and design of Frazer-Nash Research Ltd.’s taxi vehicles constituted an infringement of its exclusive rights as those of the owner of intellectual property, said rights consisting of the original shape of the cab that was registered as a spatial trademark.
The court of first and appellate instance ruled to dismiss the claim on the grounds that the spatial trademarks of the London cab registered in the name The London Taxi Corporation Limited did not have any distinguishing features in terms of the products (class 12 under the Nice classification) bearing them, meaning that the shape of the vehicle registered as a spatial trademark was not original or uniquely different from the shapes of other vehicles. The courts also pointed that consumers would perceive said spatial trademarks only as images of the traditional shape of the taxi vehicle and would not connect them to the source (producer) of the goods that they marked.
In conclusion, it should be noted that even though obtaining and securing spatial trademark protection is rather difficult, the possibility still exists if the spatial trademark filed for registration is not merely the shape of the products but basically can be recognised by the public as a medium for the identification of the source of particular products or services. However, in this case there is an alternative: registering the shape of a product as a design rather than spatial trademark. Still, one has to remember that design registration should be procured before, or within the period of one year of the launch of the products; otherwise, the design is considered to have lost its novelty. Even though design protection has a time limit of just 25 years, sometimes it can offer a more efficient form of protection of rights than a spatial trademark.