Whirlpool Corporation & Ors v Kenwood Ltd

A registered three-dimensional Community trade mark must be assessed by reference to the mark as registered and presumed valid unless invalidity is established. Distinctiveness and similarity are separate questions. In assessing infringement, the court must consider the circumstances of the allegedly infringing use and the presumed expectations of the relevant average consumer, including consumers targeted by the products in the market concerned.

A product shape may function as a sign, but resemblance or a mental association does not necessarily establish confusion, unfair advantage or detriment. In a premium market, clear branding may prevent confusion during the purchasing process. Passing off requires goodwill, misrepresentation and damage; satisfaction of goodwill alone is insufficient.

Whirlpool claimed that Kenwood’s kMix stand mixer infringed Community trade mark number 2,174,761, a registered three-dimensional representation of the bodywork of the KitchenAid Artisan mixer. Whirlpool also alleged passing off based on the finished appearance of the Artisan mixer.

Kenwood counterclaimed for invalidity, but ultimately did not dispute validity. The court considered the scope of the registered mark, distinctiveness, the relevant consumer, survey and witness evidence, similarity, likelihood of confusion, reputation, unfair advantage and detriment, and the elements of passing off.

1. Validity and scope. The counterclaim did not provide a sustainable basis for invalidity and was insufficient to displace the presumption of validity under Article 95 CTMR. The infringement claim had to be assessed by reference to the registered mark as a whole, including the registered representation and description. Colour was not an element of the registered mark, whereas it was relevant to the passing-off claim.
2. Distinctiveness. A three-dimensional shape is distinctive under Article 7(1)(b) only if it differs distinctively from the norm or customs of the relevant sector. It need not contain a capricious or purely decorative addition. The bodywork of the Artisan mixer had sufficient individuality to function as an indication of trade origin for design-conscious consumers, even without the word KitchenAid.
3. Relevant consumer and infringement under Article 9(1)(b). The average-consumer assessment must reflect the circumstances characterising the allegedly infringing use. It was therefore legitimate to take account of design-conscious consumers purchasing premium mixers. The kMix reminded consumers of the Artisan, but was not sufficiently similar to make them believe that the products came from the same or economically linked undertaking. KENWOOD branding was clear and there was no likelihood of confusion during the process from selection to purchase.
4. Reputation and Article 9(1)(c). The Artisan mark had a reputation in the Community. The kMix created a link in the sense that it called the Artisan to mind. However, the resemblance did not impinge upon the distinctive character or repute of the Artisan mark and did not take unfair advantage of, or cause detriment to, it. The Article 9(1)(c) claim therefore failed.
5. Passing off and special edition. The finished appearance of the Artisan had goodwill, but the kMix did not make the required misrepresentation. Damage consequently could not be established. The AGA special edition stood on the same footing as the KENWOOD-branded kMix.
6. Disposition. The action was dismissed. The court was to hear submissions on the appropriate form of order.

First-instance decision. No prior appellate decision is stated in the judgment.