IP specialist says case highlights difficulties associated with protecting three-dimensional trade marks

The shape of London's ubiquitous black cab is “devoid of inherent distinctive character” and cannot be protected under trade mark rules - a high court judge has ruled.

The recent high-profile judgment involves the makers of Metrocab, a new eco-friendly cab, and The London Taxi Company. The latter claims that the hybrid-powered taxi developed by Frazer-Nash Research and Ecotive copies the design of the latest version of the hackney carriage.

Mr Justice Arnold dismissed this however and said that the iconic vehicles are “merely a variation of the typical shape of a car”, ruling that trade marks exclusively relating to its shape should be deemed invalid.

He added that the design of the black cab “would be perceived as merely a variation of the typical shape of a car.”

Expert Opinion

"This decision again showcases the difficulties associated with protecting three-dimensional trade marks - even when a mark has been granted it is still possible to be revoked if challenged.

“Although the black cab is undoubtedly one of the iconic symbols of London, in order to qualify for and maintain a trade mark for just a shape it must be capable of denoting trade origin. The judge here was clear in his decision that the average consumer would not know that the taxi originated from The London Taxi Company on the basis of the shape of the taxi alone (as opposed to any names/logos on the car itself).

“The judge also found that neither taxi drivers nor taxi passengers would be deceived as to the origin of the Metrocab due to its similarity to The London Taxi Company's design; deception is traditionally a high hurdle to succeed for a claim of passing-off and there was simply insufficient evidence of such here.

“This decision leaves the path clear for not only Metrocab but also other transport operators to adopt a similar-shaped vehicle for taxi services, and we could soon see this type of carriage being used by a range of operators on London streets; however with the Metrocab ready to be launched later this year it seems that Frazer-Nash will have quite the head-start on its competition."
Georgie Collins - Partner