Earlier this week, in The London Taxi Corporation Ltd (t/a The London Taxi Company) v Frazer-Nash Research Ltd & Another [2016] EWHC 52 (Ch) Mr Justice Arnold delivered a major decision in the Chancery Division of the High Court, England and Wales. In a judgment of over 33,000 words he held that both the UK and Community three-dimensional trade marks belonging to the plaintiff, which portrayed the shapes of models of London taxis, were invalid not only because they were devoid of distinctive character but also because they consisted exclusively of the shape which gave substantial value to the goods.

Right: the plaintiff's Community trade mark

In short, Mr Justice Arnold found that the trade marks would have been regarded by the average consumer as a mere variation of the typical shape of a taxi; those shapes would not be viewed as designating the origin of the goods. Accordingly the marks lacked inherent distinctiveness. Nor was there any acquired distinctiveness. This was because there was no evidence that the average consumer perceived taxis embodying the marks as emanating from the trade mark owner because of their shape, as opposed to conventional word and trade marks on the taxis.

The marks were in any event invalid because they consisted exclusively of the shape which gave substantial value to the goods, not least because the shape covered by UK trade mark was protected as a registered design, while the Community trade mark could have been protected as a registered design.

Above: the plaintiff's Fairway cab is on the left of the illustration, the defendant's Metrocab is on the right

Just in case there was any doubt as to the status of the plaintiff's marks, the learned judge added that the Community trade mark was invalid for non-use, because the only use of taxis that embodied that mark in the five-year period before this action consisted of the sale of second-hand taxis or sales for scrap.

The defendant's Metrocab taxi, which was the object of this litigation, could not even be said to infringe the plaintiff's marks: this was because there was only a low degree of similarity and no likelihood of confusion.