Black cab shape case could be heading for Supreme Court

Find out why

The Court of Appeal has ruled that the shape of the traditional black cab is ‘not distinctive enough’ to benefit from rights of exclusivity in the form of trade mark protection.

The London Taxi Company had been trying to enforce exclusive rights to the shape of its traditional black taxi in order to prevent rival company, Frazer-Nash, from launching a new-style vehicle onto the market. However, in January 2016 a High Court judge ruled that its trade marks were not valid and the Court of Appeal has now upheld this decision.

The matter may not rest here however, and The London Taxi Company could decide to take the matter to the Supreme Court.

Tania Clark, partner and trade mark attorney at intellectual property firm, Withers & Rogers, said:

“There is a lot at stake for The London Taxi Company and it is unlikely to back down. The matter could reach the Supreme Court and Lord Justice Floyd’s comment in his decision – ‘in case the matter is pursued further’ - seems to suggest this is a possibility.”

A number of legal disputes over product shapes have come to light recently. Earlier this year, Nestle lost a similar case at the Court of Appeal following an attempt to secure trade mark protection for the shape of its four-fingered chocolate bar. Last month, Toblerone’s maker, Mondelez, agreed an out of court settlement with Poundland following a dispute over similarities in the appearance of its Twin Peaks chocolate bar and the latter agreed to re-design its product.

Tania Clark, partner and trade mark attorney at intellectual property firm, Withers & Rogers said: “The ruling means that rival taxi companies are now free to release other, new-look black cabs onto the market without fear of facing a trade mark infringement action.

“The decision is a set-back for the London Taxi Company but it’s not necessarily the end of the matter and it could go as far as the Supreme Court.

“Achieving a trade mark registration for a ‘shape’ is notoriously difficult. It is necessary to prove that the shape of the product alone is enough for consumers to recognise it as being owned by a particular company. Evidence is required, which would usually be consumer research. This is part of the reason why disputes that centre on attempts to register shapes can often become long drawn out.”

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