Whirlpool in a spin after battle of the mixers

In Whirlpool Corporation v Kenwood Ltd ([2009] EWCA Civ 753, July 23 2009), the Court of Appeal of England and Wales has upheld a decision of the High Court in which the latter had held that Kenwood Ltd's electric mixer did not infringe Whirlpool Corporation's Community trademark (CTM).

Whirlpool produces kitchen equipment, including an electric stand mixer known as the KitchenAid Artisan, which is aimed at design-conscious consumers and sold at a premium price of over £300. Whirlpool owns a CTM registration in Class 7 of the Nice Classification in respect of the shape of the mixer, which bears the word ‘KitchenAid’.

Kenwood, seeking to enter the same market, launched the kMix mixer, which looked similar to the KitchenAid Artisan, although there were small differences and the mark KENWOOD appeared beneath the dial.

Whirlpool alleged trademark infringement under Articles 9(1)(b) and 9(1)(c) of the Community Trademark Regulation (40/94) and passing off. Whirlpool claimed that:

• its CTM had a reputation in the European Union; and
• the kMix took unfair advantage of, or was detrimental to, the distinctive character or repute of the CTM.

The High Court rejected Whirlpool’s claims, finding that although there was a degree of similarity between the mixers, this was insufficient to confuse design-conscious consumers as to trade origin, or to damage the distinctive character or repute of Whirlpool’s CTM.

In particular, the court found that to the average consumer, one of the mixers may bring the other to mind; hence, the requirement for similarity under Article 9(1)(c) of the regulation was fulfilled. However, the similarity did not cause confusion as to trade origin and, therefore, did not constitute trademark infringement. Although the arrival of Kenwood's mixer on the market eroded Whirlpool's market share, the similarity between the bodywork of Kenwood's mixer and that represented by the CTM was not sufficient to affect the distinctiveness of the CTM. The court noted that Article 7(1)(e) of the regulation was relevant in assessing the issue of similarity. Article 7(1)(e) aims to prevent a manufacturer from monopolizing the market for a particular kind of product by registering a trademark consisting exclusively of the shape of the product where the shape results from the nature of the product itself.

Whirlpool appealed. It argued that the High Court had made the following errors of law in reaching its conclusion that the kMix did not take unfair advantage of, or cause detriment to, the distinctive character or repute of the CTM:

• The court had wrongly referred to Article 7(1)(e) of the regulation when making its assessment under Article 9(1)(c).
• The court had applied a narrower test of infringement than it would have done if the CTM were a word or logo mark. The basis of the appeal was the trial court’s view that “in the realm of product shapes it would be wrong to apply the concepts… as generally they would be applied as regards another kind of mark”.

The Court of Appeal dismissed Whirlpool’s appeal and upheld the High Court’s decision that there was no infringement under Article 9(1)(c) of the regulation.

With regard to the first argument, the Court of Appeal held that the High Court had not mistakenly applied Article (7)(1)(e). Rather, the Court of Appeal pointed out that the rationale behind Article 7(1)(e) was relevant in deciding whether there was sufficient similarity under Article 9(1)(c), as both the CTM and the kMix concern shapes. The Court of Appeal found that it was not a misdirection in itself to observe that the CTM and the kMix consisted of the shape of the product itself.

With regard to the second argument, the Court of Appeal held that in a sophisticated market such as that at issue, a consumer would be aware of the arrival of a new product on the market. This is particularly true when, as in this case, the new product is the second of only two products available. In saying that the relevant concepts were not to be applied "more generally", the High Court meant that these concepts could not properly be applied so generally as to find that the shape of Kenwood's mixer was so close to that of the CTM as to offend against Article 9(1)(c). It was not saying that they were to be applied less generally in a case where the mark and the sign were both product shapes.

Whirlpool also argued that Kenwood gained a competitive advantage in the form of increased sales of the kMix resulting from an association by customers of the kMix with the positive qualities of the CTM. Therefore, Whirlpool alleged that Kenwood secured an unfair advantage from the distinctive character and repute of the CTM contrary to Article 9(1)(c) of the regulation. Whirlpool sought to rely on the European Court of Justice’s recent judgment in L'Oréal SA v Bellure NV (Case C-487/07).

The Court of Appeal noted that the facts in this case were a long way from L'Oréal, in which the alleged infringers had shown a clear intention to take advantage of the distinctive character and repute of the marks (for further details on the L'Oréal Case please see "ECJ clarifies the meaning of 'unfair advantage' in smell-alike case").

The Court of Appeal further found that Kenwood had its own established goodwill in kitchen appliances and did not need to “ride on Whirlpool's coat-tails”. As a newcomer in a specialist market in which Whirlpool had a monopoly, and being the same basic shape as Whirlpool's mixer, Kenwood's mixer would remind an average, design-aware customer of Whirlpool's mixer. However, this was a very different phenomenon in different commercial circumstances from the situation in L'Oréal.

This decision indicates that it is far from easy to demonstrate that unfair advantage has been taken of a trademark’s distinctive character or repute - other than showing a clear intention to take advantage of an earlier mark’s distinctive character or repute, it remains to be seen what other factors will be deemed to categorize an advantage as unfair. The decision also appears to confirm that shape marks are difficult to enforce when the issue of infringement enters a territory arguably more appropriate to registered designs.

Rachael Sharples and Chris McLeod, Hammonds LLP, London