Mark Platts-Mills QC and Maxwell Keay appeared for the Respondents, Frazer-Nash Research Limited and Ecotive Limited, in this appeal by the Appellant, the London Taxi Corporation, against the Judgment of Arnold J,  EWHC 52 (Ch).
This case concerned the Appellant’s trade marks for the shape of London taxis. The Appellant alleged that the Respondents’ new taxi infringed the trade marks and constituted passing off. Arnold J held at first instance that trade marks were invalid for lack of distinctive character and because they consisted of a shape which gives substantial value to the goods. One of the trade marks was also liable to be revoked for non-use. The Judge held that even if the trade marks were valid there would be no infringement and dismissed the claim for passing off.
The Court of Appeal dismissed the appeal. Floyd LJ agreed that the trade marks were invalid for lack of inherent or acquired distinctive character, and that the Appellant did not possess the necessary goodwill for a claim in passing off. Floyd LJ upheld Arnold J’s conclusion that taxi drivers and hirers do not perceive the shapes as denoting the vehicles of one manufacturer only. In considering whether the shapes gave substantial value to the goods, Floyd LJ said it was not clear cut whether one could take into account the fact that consumers would recognise the shape as that of a London taxi and said he would have referred the question to the CJEU had it been necessary to do so.