Important  

Trade Marks

Case Note: Dualit Ltd's TM Application (Appeal to Lloyd J)

John Lambert
28 July 1999
This case note originally appeared on the Lancaster Building website

This is an important case for anyone wishing to register the shape of a product as a trade mark. Lloyd J distinguished features of shape that are dictated by function and as such inherently incapable of distinguishing goods of one undertaking from those of all others within the meaning of ss. 1 (1) and 3 (1) (a) of the Trade Marks Act 1994 ("the TMA") from features of style which may become distinctive through use and thus become registrable by virtue of the proviso to s. 3 (1). He also considered the use of survey evidence for the purposes of showing distinctiveness through use and provided some useful pointers as to how such surveys should not be done. The case helps explain the Court of Appeal's decision in Philllips Electronics NV v Remington Consumer Products Ltd. [1999] EWCA 1340 BAILII and refers to the recent decisions of the European Court in Joint Cases C108/97 and C109/97 Windsurfing Chiemsee and C342/97 Lloyd Schufabrik Meyer. Finally, it detaches the High Court's appellate jurisdiction from decisions of the Registrar from its Community trade mark court jurisdiction under art 91 of Council Regulation 40/94/EC.  

The Issues
This was an appeal from the decision of the Registrar in Dualit's Application [1999] RPC 304, dismissing an application to register the shapes of two of its toasters as trade marks. The press had called those toasters modern design classics. The opponent, Rowlett Catering Appliances Ltd, was a rival toaster manufacturer. The applicant had already managed to register the shapes of various versions of one of its models as a Community trade mark and had brought infringement proceedings before the High Court against the opponent, which proceedings the learned judge studiously ignored. The opponent objected to the application on the grounds that the shapes of the toasters were:

	incapable of distinguishing the applicant’s goods from those of other manufacturers as required by s. 1 (1) of the TMA;
	devoid of distinctive character within the meaning of s. 3 (1) (b);
	exclusively signs or indications which may serve in trade to designate the kind, intended purpose, or other characteristics of goods within the meaning of s. 3 (1) (c); and
	exclusively shapes which give substantial value to the goods under s. 3 (2) (c).

In reply to the objection under ss 3 (1) (b) and (c), the applicant produced the results of a survey of some 126 persons that had been carried out by the pollsters NOP Ltd.

The Judgment
Lloyd J dismissed the appeal on the ground that the shapes were not inherently distinctive and that they were not shown to have acquired a distinctive character through use as at the date of application. However, he differed from the Registrar to the extent that he believed that the shapes were capable of being distinctive. He did not consider it necessary to make a reference to the European Court though he indicated that he would have done so had it been necessary for him to consider whether the subject matter of the application consisted exclusively of shapes that give the product substantial value.

The Relevant Law
The TMA permitted the registration of shapes of goods as trade marks which the House of Lords found not to be possible under the previous legislation (see Re Coca Cola Company's Application [1986] 1 WLR 695). Para 2 of s. 1 (1) specifically includes "the shape of goods or their packaging" within the class of signs that may be registered provided they are capable of distinguishing the goods or services of one undertaking from those of all others. However, ss 3 and 4 of the Act exclude from registration certain categories of signs including those that do not satisfy the requirements of s. 1 (1) under s. 3 (1) (a) and those that are devoid of distinctive character under s. 3 (1) (b). The distinction between signs falling in paragraph (a) and those falling in paragraph (b) is not obvious and it appears that even the hearing officer may have confused the distinction. The learned judge cited Jacob J's example of "soap" in British Sugar Plc v James Robertson & Sons Ltd. [1996] RPC 281 as a sign that could never distinguish the products of a soap manufacturer as one falling within s. 3 (1) (a).

Distinction between Function and Style
The hearing officer had rejected the application under s. 3 (1) (a) because the shapes in question denoted a particular style of toaster which he doubted could ever acquire a trade mark character through use. His lordship disagreed holding that there was a difference between functional features, which could no more distinguish one manufacturer's toasters from those of all others than the word "soap" in Jacob J's example, and stylistic features, which could distinguish one manufacturer's toasters from others'. In the judge's own words:

"It seems to me that to say that the Applicant’s products are, so to speak, generic of a particular style of toaster is by no means the same sort of proposition as saying of Philips’ product that it was generic of a particular type of shaver, namely a three headed rotary version. Distinctive features of a product could be matters of style. Therefore to define a category of goods by reference not to function or mode of operation but to style seems to me not an appropriate approach to sections 1 (1) and 3 (1) (a)."
 

That, of course, is not the end of the story because the applicant must show either that the shape is not devoid of distinctive character or that it has become distinctive through use and therefore qualify for registration under the proviso to s. 3 (1).

Test of Distinctiveness
Lloyd J said that a mark has a distinctive character for the purposes of s. 3 (1) (b) if it communicates the fact that the goods with reference to which it is used recurrently are those of one and the same undertaking. He approved Jacob J's observation in British Sugar that a sign must be such that it is incapable of fair and honest application to the goods of anyone else.  The applicant's word mark "Dualit" was an example of a sign that no trader other than the applicant could honestly or fairly apply to its toasters whether or not it had actually done so itself.  Applying that test the judge found that there was nothing about the shape alone which, apart from evidence of use, made it inherently distinctive as a badge of origin of the applicant’s products. Moreover, since any other trader, like the applicant itself, was likely to use its own word mark on the surface of the article, his lordship could not say that, if the shapes had never been used by the applicant, another trader could not have used the shape fairly and honestly.

Evidence of Use
The applicant relied on evidence of trade representatives, a survey and accolades in the press. The trade witnesses, who included a buyer from Harrods and a director of the Association of Catering Equipment Manufacturers and Importers, did not assist the judge because it was their business to know the applicant’s products and those of other manufacturers. That they knew their job and could recognize the shapes as being those of the applicant’s products did not begin to show that “the relevant class of persons, or at least a significant proportion thereof, identify [the] goods as originating from a particular undertaking because of the trade mark” as the relevant class consisted not of trade buyers but of consumers. The press accolades took the matter somewhat further than the trade witnesses but did not assist his lordship to decide whether there was a sufficient recognition by reason of the shape alone among a significant proportion of the relevant market. The survey evidence did not show that a significant proportion of consumers recognized the applicant's toaster by its shape and the judge doubted whether it even showed that anyone did. Moreover, the methodology of the survey was flawed in the selection of interviewees and in the way that the questions were drafted. Its results did not bring the applicant within the proviso of s. 3 (1).

Comment
This judgment is or should be very helpful to patent and trade mark agents because it shows the way forward in applications to register shapes. The shape must be more than merely functional and it must not fall within any of the exclusions in s. 3 (2):

	a shape that results from the nature of the goods themselves;
	a shape that is necessary to obtain a technical result, or
	a shape which gives substantial value to the goods.

If the shape does fall within one or more exclusions survey evidence may well be useful provided the methodology is right. Industrial market research could be regarded as a sociological experiment not altogether different from a scientific experiment in patent litigation. It may be that much time and money could be served by applying by analogy the procedure set out in that paragraph, particularly an application to the court for directions in respect of a market research survey.

Articles
John Lambert The Trade Marks Act 1994
John Lambert The Trade Marks Rules 2000
3 May 2000

John Lambert Community Trade Marks
9 April 2003