" The ultimate question in the action is whether Whirlpool is entitled, either on the basis of the rights conferred by registration of Community trade mark number 2, 174, 761 or on the basis of the law relating to passing off, to prevent Kenwood from marketing stand mixers having the shape and appearance of its kMix mixer launched in July 2007. "

This is a KitchenAid Artisan mixer:



This is a Kenwood kMix mixer:



This is the registered representation of Community trade mark number 2,174,761:



On 1 October 1999, Whirlpool Properties Inc applied under number 1,331,685 to register the following three-dimensional shape as a Community trade mark for 'electric beating and mixing machines and attachments for such machines' in Class 7:



The examiner objected to registration under Article 7(1)(b) on the basis that the shape as a whole was devoid of any distinctive character for goods of the kind specified. The applicant tried, but failed to persuade the examiner that the objection should be waived. On 12 January 2001, the Office issued a decision formally refusing the application. The applicant did not appeal. Nor did it file a fresh application with a view to securing registration under Article 7(3) CTMR.

The following compilation of images shows various stand mixers available for purchase in the EU in 2007:



Over the past 10 years or so Whirlpool has used emblematic representations of the shape of the Artisan mixer on consumer facing items such as stickers, stamps, badges, envelopes, folders, brochures, packaging and bags."

There was no likelihood of confusion and so no infringement under Art.9(1)(b). While the kMix would be recognised as ‘KitchenAid-ish’, it would not be mistaken for a KitchenAid. There wasn’t even confusion of the ‘bait and switch kind’, whereby consumers would only realise that the kMix was not a KitchenAid after close examination. Moreover, a consumer who was about to spend upwards of £300 on a mixer would be unlikely to be under a misapprehension as to trade origin. This lack of confusion also meant that there was no misrepresentation for the purposes of passing off.

As for Art.9(1)(c), the ‘mnemonic’ effect of the two marks meant that there was a ‘link’ between them. However, although it might affect its market share, the kMix would not affect the distinctive character or repute of the KitchenAid mark. In the words of Mr Hobbs QC, the KitchenAid was "distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for the purposes of Article 9(1)(c)."
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