The owners of two emblematic brands have lost their claims to Intellectual Property (IP) protection lately, in cases which highlight the need to exercise careful thought in the formulation of trade mark applications.

The first is the well-known London black cab. The London Taxi Company (LTC) went to the High Court to claim that the manufacturers of the ‘Metrocab’ had infringed the trade mark of the London black cab and had profited from the goodwill of LTC (‘passing off’).

The claim was defended on the basis that the LTC designs lacked ‘distinctive character’, and that the LTC marks consisted exclusively of a shape and that the shape was not, in the mind of the ‘average consumer’, other than an indication of the standard shape of a licensed taxi in London.

It would, the Court ruled, be inappropriate for the shape of the vehicle to be the subject of the trade mark right. In addition, the Court concluded that the trade mark rights on one of the LTC designs on which the claim was made had lapsed through non-use over time and that there was no passing off as the defendants made no representations that their cabs were made by LTC.

In the second case, the Supreme Court confirmed that the registered design of the ‘Trunki’ suitcase was not infringed by that of a similar economy-priced children’s suitcase made by a competitor. In this case, the mistake made was a failure to be sufficiently precise as to which design elements were protected under the registered design.