Whirlpool Corporation & Ors v Kenwood Ltd

Protection for a trade mark with a reputation requires more than a link between the mark and the defendant’s sign. Detriment to distinctive character requires an actual or seriously likely change in the average consumer’s economic behaviour.

Unfair advantage requires proof that the defendant obtained or was likely to obtain an advantage from the similarity. The advantage must also be unfair. Intentionally exploiting the mark’s attraction, reputation, prestige or the proprietor’s marketing effort may establish unfairness, but some additional factor is required.

The same infringement principles apply to product-shape marks as to other marks. The nature of a product shape and the source of its similarity remain relevant within the required global assessment.

Whirlpool owned a Community trade mark depicting the shape of its KitchenAid Artisan stand mixer together with the word KitchenAid. Kenwood introduced the kMix, another premium-priced stand mixer aimed at design-conscious consumers. Whirlpool alleged that the shape of the kMix infringed the reputed mark under article 9(1)(c) of Council Regulation 40/94.

The deputy judge dismissed the claims in [2008] EWHC 1930 (Ch). He found that the kMix called the KitchenAid Artisan to mind but caused no confusion. He also found no detriment to the mark and no unfair advantage.

Whirlpool appealed only against the dismissal of the article 9(1)(c) claim. It contended that the judge had wrongly introduced the policy of article 7(1)(e) and had applied an unduly restrictive test because the mark and sign were product shapes. The central issues were whether either error occurred and whether the evidence established detriment or unfair advantage.

1. The appeal was dismissed unanimously. Lloyd LJ gave the judgment, with which Wilson and Rix LJJ agreed. The deputy judge had correctly rejected both detriment to distinctive character and unfair advantage under article 9(1)(c) of Council Regulation 40/94.

2. A mark with a reputation receives protection without proof of confusion. The required link exists where the later sign calls the earlier mark to the mind of the relevant public. The link and any resulting injury must be assessed globally, taking account of all relevant circumstances. A link alone does not establish infringement.

3. The deputy judge had not applied a special, narrower infringement test to product shapes. The nature of the mark and sign, and the nature of their similarity, were relevant to the global assessment. His reference to the policy underlying article 7(1)(e) merely recognised that the products necessarily shared some features and that the registered shape lacked a fanciful or capricious distinguishing feature. Even if that reference had produced a misdirection, the evidence could not have supported a different result.

4. Detriment to distinctive character requires evidence of an actual change in the economic behaviour of the average consumer, or a serious likelihood of such a change. The kMix reminded consumers of the KitchenAid Artisan, but consumers contemplating this relatively expensive purchase would recognise the products’ different origins. The evidence did not show that the resemblance materially influenced purchasing decisions. Loss of market share through lawful entry by a competitor did not itself impair the trade mark.

5. Unfair advantage concerns a benefit obtained by the third party rather than loss caused to the proprietor. An advantage is not necessarily unfair merely because it results from similarity. Intentional riding on a reputed mark’s coat-tails to exploit its attraction, prestige or the proprietor’s marketing investment can supply the additional element of unfairness. Other circumstances might also do so.

6. Whirlpool proved neither that Kenwood obtained or was likely to obtain a commercial advantage from the resemblance nor that any advantage was unfair. Kenwood sought to build on its own established goodwill. Its design did not transfer the image or projected characteristics of the KitchenAid mark to the kMix. The article 9(1)(c) claim therefore failed.

1. Court of Appeal (Civil Division): In [2009] EWCA Civ 753, the court unanimously dismissed Whirlpool’s appeal against the rejection of its article 9(1)(c) trade mark claim.
2. High Court, Chancery Division, Community Trade Mark Court: In [2008] EWHC 1930 (Ch), Geoffrey Hobbs QC, sitting as a deputy High Court judge, dismissed Whirlpool’s two trade mark infringement claims and its passing-off claim.