Whirlpool's World Of Trouble In Stand Mixer Suit

Whirlpool emerged worse for wear following its recent attempt to stamp on rival Kenwood’s K-MIX stand mixer (Whirlpool Corporation & Ors. v Kenwood Ltd. [2008] EWHC 1930 (Ch) ). The decision by the High Court casts long shadows on the validity of Whirlpool’s CTM for the shape of its famous KITCHEN-AID stand mixer, and prompts sobering re-assessment of the value of CTM registrations for non-distinctive shapes secured only because of the inclusion of distinctive words.

Mise en Place

The retro design elements of the KITCHEN-AID Artisanal mixer (“the Artisanal”) were key to its popularity as one of the best-selling stand mixers in the UK, with a special appeal to design-conscious consumers.

Whirlpool sought to register line drawings of its shape, stripped of all branding, as a CTM in 1999. OHIM regarded the shape per se as devoid of distinctive character, however, and rejected the application.

Undeterred, Whirlpool tried again, this time taking the precaution of including the tiny word KITCHEN-AID on the front of the line drawing depicting a face-on view of the mixer head. The word KITCHEN-AID was so small as to be illegible, but it was apparent that wording was there. Initially the examiner objected that the shape lacked distinctiveness, but waived the objection when Whirlpool pointed out that the word KITCHEN-AID appeared in the mark, and that in line with Communication No. 2/98 of OHIM’s President, non-distinctive shape marks were registrable if they included distinctive word elements.

Chastened, the examiner accepted the mark despite the illegibility of the wording and the CTM was registered.

Mixing It Up

Seeking to enter the market for designer kitchen mixers, rival Kenwood launched its own K-MIX mixer, designed to appeal to the same consumers already attracted to the Artisanal design. The K-MIX was visually similar to the Artisanal, although there were differences and the word KENWOOD appeared beneath the dial.

Whirlpool launched a claim for CTM infringement and passing off following the UK market debut of the K-MIX mixer, claiming a likelihood of confusion. It further claimed that it had a reputation in the registered shape of the Artisanal mixer in the Community and that the K-MIX mixer took unfair advantage of, and was detrimental to, the distinctive character and repute of Whirlpool’s CTM.

When the case came before the Court, the judge noted the finding of non-distinctiveness in respect of Whirlpool’s original CTM and was astonished that the later CTM had been registered based on the inclusion of the word KITCHEN-AID when that word was effectively illegible, and without any disclaimer of exclusive rights in the non-distinctive design. The judge expressed severe doubt that the practice behind the acceptance complied with OHIM’s duty to render “full and stringent” examination. In his view, this case and others like it were ripe for the imposition, by OHIM, of disclaimers under Article 38 (2) CTMR to make it clear that the rights conferred did not extend to the non-distinctive elements and were confined to the distinctive verbal element alone.

Nonetheless, no disclaimer had been required in this case and Kenwood did not challenge the validity of Whirlpool’s CTM. The Court therefore had to proceed on the basis that the CTM was valid and that the rights in it extended to the whole of the mark.

Into the Mix

Whirlpool relied on 23 witnesses who had given evidence following a massive witness-gathering exercise involving some 660 questionnaires. Most of those were not in evidence at the trial.

Of the witness statements and questionnaires disclosed to the Court, most commented on the shape of Kenwood’s K-MIX mixer as being a design feature. Although some witnesses mentioned the similarity of the K-MIX design to the KITCHEN-AID Artisanal mixer, most did so in the context of a comparison with the Artisanal (ie, “it looks like a KITCHEN-AID”), but recognised that it was in fact something different.

Whirlpool argued that the association of the K-MIX shape with the Artisanal was enough to indicate that there was a likelihood of confusion between them as to origin. However, the judge noted that none of the witnesses or questionnaire respondents appeared to regard the shape as an indicator of origin as opposed to simply a stylish design. Moreover, the constant refrain was not, “it’s a KITCHEN-AID,” but rather, “it looks KITCHEN-AIDish.”

In the judge’s view, likelihood of confusion had to be considered from the point of view not of the average consumer in general, but rather the average design-conscious consumer, since these were each party’s target customers. For such consumers, the Court considered that there was clearly enough similarity that the Kenwood mixer would bring the Artisanal to mind, but not enough to lead to confusion. The average consumer in this market was, in his view, “alive to the potential for variations in appearance to be indicative of differences in trade origin.” He added, “no one who was actually contemplating the possibility of spending more than £300 on the purchase of either product would be under any misapprehension as to their true trade origin.”

Finishing Touches

The judge accepted that Whirlpool’s mark enjoyed a reputation in the Community through its profile in the UK and, albeit more reluctantly, accepted that the visual similarities between the shapes were sufficient to give rise to a link for the purposes of infringement based on reputation and unfair advantage or detriment.

However, that link was not sufficient to take unfair advantage of or cause detriment to the distinctive character or repute of the CTM. The mere fact that Kenwood’s K-MIX mixer brought the Artisanal to mind did not, in the judge’s view, have any impact on the distinctiveness or repute of the CTM. Merely being apt to erode Whirlpool’s market share did not in itself impinge upon any property right that Whirlpool could claim. Neither Whirlpool nor any other trader was entitled to claim a right to market share.

On the evidence that some consumers would buy the K-MIX product because of its visual similarity to the Artisanal, the judge simply remarked that “resemblance can have that effect without being objectionable from a trade mark point of view.”

The judge rejected the infringement claim and, given his finding on likelihood of confusion, also dismissed the action for passing off. 

Comment

This case is a rare exploration of the validity and scope of CTMs for nondistinctive shapes, granted only because of their inclusion of distinctive words.

Many might share the Court’s astonishment that Whirlpool’s mark was accepted at all, since if the shape was non-distinctive, and the sole distinctive element was illegible, there was in fact nothing to protect. OHIM itself has begun to re-think its controversial approach in such (hopefully infrequent) cases, as evidenced by the recent decision of the Board of Appeal in 2K Distribution Sarl v Energetec Gesellschaft für Energietechnik mbH (Case R 426/2008-2) in which the Board struck down a CTM for the non-distinctive shape of an oven, on which the word BULLERJAN supposedly appeared but could not be read.

The bringing of this action by Whirlpool may perhaps have concentrated OHIM’s mind. When Presidential Communication No. 2/98 was issued, OHIM may not have realised the potential for trouble arising from actions based on rights, effectively, in non-distinctive shape elements alone. Indeed, in the Communication it stated that acceptance based on this practice “cannot be taken as an indication that the Office would have accepted the three-dimensional shape itself as registrable.” That registrants are prepared to exploit this ambiguity, however, should come as no surprise.

OHIM could avoid the problem in future by actively requiring the disclaimer of clearly non-distinctive matter, as it is empowered to do under Article 38 (2). However, to date there is no sign that OHIM’s lethargy on this point is likely to abate.

Careful reading leaves the strong impression that the judge was intent on the eventual findings regardless of the evidence. The short shrift he gave to the unfair advantage claim, in particular, is in striking contrast to his careful examination of the remainder of the case, and arguably does not do justice to plausible arguments that Kenwood was likely to attract customers simply because of the visual similarity of its mixer with the famous Artisanal mixer. The judge’s flat rejection of this claim as an attempt to claim property in market share is less than satisfying.

Nonetheless, the outcome seems right, and it is unlikely that Whirlpool will assert the CTM in question with confidence again. OHIM’s website does not indicate that any invalidity claim has yet been brought, but any such claim would be significantly enhanced by the reasoning of the Court in Whirlpool.

For brand owners at large, this case throws grave doubt on the scope of CTMs granted primarily for nondistinctive matter, allowed only because of the presence of peripheral distinctive elements. In light of that, those seeking to protect shapes, in particular, will need to re-think their filing strategies. Where possible, applications that can be supported by persuasive evidence of acquired distinctiveness will be strongly preferable, despite the cost, to a registration that it is now clear will not cover the elements of actual interest. Promotional strategies that emphasise shape as an indicator of origin will become more key.

All these lessons come too late for Whirlpool, deeply out of pocket after a wrenching defeat. Nonetheless, for others, the sobering lessons this case offers may enhance trade mark protection decisions in the future.