Limits of enforceability of 3D marks highlighted

United Kingdom
In Whirlpool Corporation v Kenwood Limited ([2004] EWHC 1930 (Ch), August 4 2008), the Chancery Division of the High Court of England and Wales has provided valuable guidance as to the acceptable limits of the enforceability of three-dimensional trademark registrations. 
Whirlpool Corporation sued Kenwood Limited for trademark infringement and passing off, seeking to prevent Kenwood from marketing mixers with the shape and appearance of its K-Mix mixer. The claims were based on Whirlpool’s KitchenAid Artisan mixer design, which is protected as a registered Community trademark in the form of KITCHENAID (and design).
In 1999 Whirlpool had sought a Community trademark registration for the three-dimensional representation of the shape of its KitchenAid mixer. However, the examiner of the Office for Harmonization in the Internal Market rejected the application on the grounds that the mark was devoid of any distinctive character. Whirlpool re-filed for the registration of the trademark KITCHENAID (and design), with the word element 'KitchenAid' appearing in small lettering in the graphic representation of the mark. The examiner accepted the application. According to the court, the word element which rendered the mark eligible for registration was neither conspicuous nor legible, even though it formed part of the mark as registered.
Whirlpool supported its claims of infringement and passing off with 23 witness statements from members of the general public, which had been derived from a total of 660 questionnaires. Although the evidence of the 23 witnesses was provided at trial, Whirlpool sought litigation privilege with regard to the other questionnaires and the selection process. The court emphasized the need for circumspection in the assessment of questionnaire survey evidence, and commented that such evidence should be evaluated in the context of the witness collection exercise as a whole.
The court proceeded to analyze the witness interview process and the actual declarations, and concluded that the interviewees had commented upon the aesthetic and functional aspects of the Kenwood mixer without regarding its shape or appearance as an indication of trade origin, or as being linked to the KitchenAid mixer.
The court then assessed the issue of distinctiveness and similarity of the respective mixers. It determined that the appearance of the KitchenAid mixer could not be regarded as fanciful or capricious, even though it possessed a degree of specific individuality to render it distinguishable from mixers of a different origin in the minds of design-conscious consumers. The court further determined that there was a non-substantial body of design-conscious consumers for whom the KitchenAid mixer functioned as an indication of trade origin, even without assistance from the trademark KITCHENAID.
The court noted that both mixers were premium-priced products targeted at design-conscious consumers, but did not consider Kenwood's mixer to be a replica of the KitchenAid mixer. While it acknowledged that there was enough similarity for each mixer to remind people of the other mixer, the court did not consider there to be sufficient similarity to confuse the relevant average consumer, particularly in view of the high cost of the products. 
Accordingly, the court held that there was no likelihood of confusion. It further determined that there was no detriment to reputation, since no similarity was established. This conclusion was further supported by the finding that the acknowledged similarities between the mixers did not extend to the distinctive character and repute of the trademark as represented on the bodywork of the KitchenAid mixer. 
The court finally dismissed the claim of passing off on the grounds that any misrepresentation leading or likely to lead the public to believe that goods or services offered by Kenwood were those of Whirlpool had not been established.
In conclusion, Whirlpool’s rights in the KITCHENAID mark were held to be limited. Although Kenwood's mixer was similar enough to remind consumers of the KitchenAid Mixer, it was insufficient to allow a claim for infringement or passing off.
Colin Sawdy, Field Fisher Waterhouse LLP, London

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