Black cabs v Batmobile: pros and cons of celebrity

by federicapezza

Breaking news: trade mark protection denied for London black cabs. This is the outcome of a recent ruling by Arnold J, in the Chancery Division, that has considered the London Taxi Corporation (LTD) not to be entitled to claim any trademark infringement against Frazer Nash Research Limited and Ecotive Limited.

It’s a hard time for taxi drivers!

Often neglected because of their prices, as they struggle for life against Uber and the Uberization, London black cabs are now suffering another serious blow.

This is an outcome which may surprise, especially when compared to the recent US one, where the judge, in a very witty and pop culture-sprinkled opinion, expressly recognised copyright and trademark protection to the Batmobile.[1]Specifically, the character was said to be “especially distinctive” and “unique”. Thus, quoting the Ninth Circuit, “Holy Copyright law, Batman!”[2].

But, the question immediately arises. Do we have to be super heroes to get IPR protection?

In order to fully understand the terms of the question, a deeper analysis is required.

Specifically, in the Black Cabs case, the judge held that the trade marks were invalid for the lack of distinctive character, in so far as consisting exclusively of the shape “which gave substantial value to the good”. [3] Curiously, the same element at the basis of Batmobile protection under copyright law, i.e. its “iconic” nature, was fundamental in ruling out trade mark protection under section 3(2)(c) Trade Marks Act.

In other words: pros and cons of celebrity!

Secondly, in investigating the eventually “acquired distinctive character” Arnold J concluded “there was no evidence to suggest that any consumers identified LTC as the source of the taxis because of their shape”.

Further, he found the trade mark not to have been used since 10\12 years before the relevant period and, for this reason, susceptible to be revoked for non–use, according to s. 46 (1) (b) of Trade Marks Act.

Finally, he ruled out the opportunity of a passing off remedy, arguing that LTC’s claim to goodwill had not been based on specific features of shape but upon abstractions.

Thus, following the “Kit Kat” ruling[4], a leading case where trade mark protection was denied for the Kit Kat chocolate bar, the Court approach highlighted, also in this situation, the difficulties in attempting to enforce a trade mark in respect of the shape of goods. The crucial element in the Black Cabs case is represented by an extremely vague notion of average consumer perception, not recognising the mark as indicating the origin of the taxi.

Therefore, what actually arises from the ruling is a bundle of uncertainties and issues in the legal community when dealing with a grey zone such as trade mark protection applied to shapes.

In the mean time, while striking against IP rights challenges and waiting for a clearer definition of the question, let’s just have our deliciously unprotectable Kit Kat and, at least for a moment, forget about everything.

 

 

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[1] “We read these precedents as establishing a three-part test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have “physical as well as conceptual qualities. Second, the character must be “sufficiently delineated” to be recognizable as the same character whenever it appears. Third, the character must be “especially distinctive” and “contain some unique elements of expression”.

Federica Pezza

Assistant Editor QMJIP

 

 

[2] Mark Towle v DC Comics

[3] Section 3 (2) (c) Trade Marks Act 1994 and Art. 3 (1) (e) (iii) Directive 2008/95/EC

[4] Société des Produits Nestlé S.A. v. Cadbury UK Limited Case C – 215/14