Whirlpool Corporation & Ors v Kenwood Ltd

The claimants in these proceedings are members of the Whirlpool group of companies. They are Whirlpool Corporation (a Delaware company responsible for manufacturing KitchenAid products under licence from Whirlpool Properties Inc); (2) Whirlpool Properties Inc. (a Michigan company responsible for the protection and licensing of Whirlpool Group intellectual property rights); and (3) KitchenAid Europa Inc. (a Delaware company responsible for sales and marketing of KitchenAid products throughout the EEA). It is generally unnecessary to distinguish between them for the purposes of the claims they have made against the defendant, Kenwood Ltd. Except where there is a particular need to be more specific, I shall refer to them collectively as ‘Whirlpool’. I shall refer to the defendant simply as ‘Kenwood’.

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. No claim was advanced under the provisions of Section 56 of the Trade Marks Act 1994 relating to the protection of well-known marks.

In its pleadings Kenwood raised a counterclaim for invalidity of the Community trade mark registration upon the premise that there would be invalidity for lack of distinctiveness if there was similarity sufficient to support a finding of infringement. However, this backwards to forwards reasoning disclosed no sustainable basis for declaring the registration invalid under Articles 92(d), 96 and 97(3) of Council

The kMix mixer is marketed in the United Kingdom and other Member States. There are two points arising out of that which need to be mentioned at this juncture.

The aim of both claims is to compel Kenwood to further differentiate the shape and appearance of its kMix mixers from the shape and appearance of Whirlpool’s KitchenAid Artisan mixers. This is a KitchenAid Artisan mixer:

This is a Kenwood kMix mixer:

The evolution of the design of the kMix was examined at some length in the evidence at trial. There was and remains no allegation by Whirlpool that the kMix was actually designed to deceive or mislead people. The suggestion is that there was a miscalculation as to what would be an acceptable design to adopt. I accept that this is a matter that can properly be looked into. On looking into it, I find that the kMix is indeed what it appears to be. It is the means by which Kenwood intended to move into the premium price sector of the market occupied by the Artisan mixer and make sales to design conscious consumers as best they could by matching the KitchenAid offer. Kenwood undoubtedly had the KitchenAid Artisan mixer in its sights at all material stages of the process leading up to the finalisation of the design of the kMix. Those involved in the process were in varying degrees sensitive about the parallels between the design proposals they were considering and the design of the Artisan mixer. That, in itself, is not sinister. I will, however, say that one of the proposals should have been seen as so clearly inappropriate as to require it to be excluded from consideration without a second thought. I am referring to the proposal which would, if adopted, have led to the kMix having a nose-like attachment hub protruding from the front of the mixer head in the same way as the attachment hub on the mixer head of the Artisan. It also appears to me that there was colour matching, with the red and almond colours used for the kMix being brought up tight against the red and almond of the Artisan. Whilst the KENWOOD branding beneath the dial could easily have been larger, I do not regard it as inappropriately small. In my view there was a calculated decision to proceed with the finalised design of the kMix in the sense only that it was thought to be an acceptable design with which to compete head on with the KitchenAid mixer. It was not, on the evidence before me, chosen for that purpose by reason of any anticipated propensity to deceive or mislead.

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

Colour is not an element of the mark as registered. The claim for infringement necessarily relates to what I shall call the bodywork of the unitary mixer head and stand recorded in the registered representation, irrespective of the finished appearance of the mixers which actually embody it. By contrast, the claim for passing off relates to the finished appearance of the Artisan mixer as a whole. The registered trade mark is to that extent a disaggregation of features that are, in fact, integral to the overall get-up of the mixers as marketed. The claim for infringement and the claim in passing off are thus made from different (albeit related) vantage points. They should, in my view, be recognised for what they are: separate prongs of a two-pronged attack. I am reinforced in my unwillingness to unify the two claims by the need to pay particular attention to the content of the Community trade mark registration for the reasons to which I now turn.

An application to register a three-dimensional shape as (or as part of) a Community trade mark must comply with the requirements of Rule 3 of the Regulation implementing the CTMR (Footnote: ⁸):

The registration of a three-dimensional shape is liable to be refused under Article 7(1)(b) CTMR if it is ‘devoid of any distinctive character’, with the word ‘devoid’ being taken to refer to the absence of innate distinctiveness in the shape in question. The case law of the ECJ indicates that the litmus test for innate distinctiveness is whether members of the relevant public who had not become accustomed to the shape through use (Footnote: ⁹) would, without analytical examination and without paying particular attention (Footnote: ¹⁰), immediately and with certainty distinguish goods of that shape from those of another commercial origin (Footnote: ¹¹).

The required approach to assessment under Article 7(1)(b) in cases relating to the registrability of three-dimensional shapes has repeatedly been summarised by the ECJ in terms to the following effect¹²:

Registrability cannot be made to depend upon compliance with a requirement for peculiarity of shape which is stricter than that stated in the last paragraph of this citation (Footnote: ¹²). It is therefore not essential for the shape in question to include some capricious addition, such as an embellishment which has no functional purpose¹⁴. However, that does not detract from the basic proposition that in order to be registrable ab initio under Article 7(1)(b) the shape must be sufficiently arresting to achieve immediate and certain recognition as an indication of trade origin when seen through the eyes of average consumers who are not in the habit of making assumptions about the trade origin of goods on the basis of their shape in the absence of any graphic or word element. It follows that a shape can be the embodiment of excellence in terms of design without also serving as an indication of the trade origin of the goods which embody it (Footnote: ¹³).

Put simply, the question under Article 7(1)(b) is whether the shape presented for registration differs and differs distinctively (in the trade mark sense of the word) from the norm or customs of the relevant sector. The relevant sector may, in order to reflect the realities of the marketplace, be taken to extend beyond goods of the particular kind for which registration has been requested (Footnote: ¹⁴). Whilst it remains difficult to establish that a three-dimensional shape is free of objection under Article 7(1)(b), there do still appear to be differences in the degree of difficulty encountered in different courts and tribunals operating within the framework of the harmonised law of trade marks in the Community. (Footnote: ¹⁵)

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:

Article 7(3) allows for the possibility that a shape which fails to qualify for registration when considered without regard to any distinctiveness it may have acquired through use, may nevertheless qualify for protection at the Community level upon evidence that it has become distinctive, in relation to the goods for which registration is requested, in consequence of the use which has been made of it. That is not an easy thing to establish.

Firstly, there is the difficulty of proving that the distinctiveness acquired through use extends to the parts of the Community where the objection to registration under Article 7(1)(b) would otherwise be well-founded. (Footnote: ¹⁶) That will be the Community en bloc in the case of a shape which is not prima facie registrable. Secondly, there is the difficulty of proving that the shape can stand alone as an indication of trade origin, notwithstanding that it will usually if not invariably have been commercialised by reference to words or devices that are (because they are intended to be) recognised as trade marks for the goods to which the shape has been applied. The ECJ has addressed this point¹⁹ in the following terms:

It must, accordingly, be a matter for careful consideration whether the evidence establishes that the shape has successfully been used to identify the product as originating from a given undertaking: use of a shape does not prove that the shape is distinctive; increased use, of itself, does not do so either; the use and increased use must be in a distinctive sense in order to have any materiality. (Footnote: ¹⁷)

For applicants wishing to avoid the rigours of Articles 7(1)(b) and 7(3), there is another way of obtaining registration for a three-dimensional mark. It is described in Communication No.2/98 of the President of the Office for Harmonization in the Internal Market concerning the examination of three-dimensional marks.²¹ This states as follows (with emphasis added by me):

It can be seen that the Office allows unregistrable shapes to be registered pursuant to applications for registration filed under Rule 3(4) of the Implementing Regulation if a word or device that would be independently registrable for goods of that shape is visibly applied to the embodiment of the unregistrable shape graphically represented in the application for registration. This is likened in Communication No.2/98 to the practice of accepting ‘word marks and figurative marks consisting of several elements, some or all of which by themselves would not be registrable’. The assumption appears to be that a distinctively marked shape can and should in every case be taken to constitute a single composite mark for goods of that shape. However, the reality is that there may in any given case be no composite mark, only a graphic representation of goods bearing the distinctive marking without which there would be nothing capable of distinguishing goods of that or any similar shape from those of another commercial origin.

I am not confident that this practice is compatible with the standard for examination required by the scheme of the applicable legislation. As to that, the ECJ has emphasised with reference to the provisions of the Trade Marks Directive corresponding to Articles 4, 7 and 12 CTMR (Footnote: ¹⁸) that the examination of an application for registration must be ‘stringent and full’ in order to prevent trade marks from being improperly registered and that it is not appropriate to adopt a practice of ‘withdrawing the assessment of the grounds of refusal … from the competent authority at the time when the mark is registered, in order to transfer it to the courts with responsibility for ensuring that the rights conferred by the trade mark can actually be exercised’. (Footnote: ¹⁹)

This, to my mind, indicates that the need for a disclaimer under Article 38(2) CTMR should be recognised and accepted when performing the required assessment in relation to an application filed under Rule 3(4) of the Implementing Regulation for registration of an unregistrable shape with additional elements. Article 38(2) states:

Whirlpool Properties Inc took advantage of the opportunity to apply for registration under the procedure prescribed by Communication No.2/98. The relevant application was filed on 14 March 2003. The three-dimensional mark shown in paragraph 8 above was put forward for registration in respect of ‘electric beating and mixing machines and attachments for such machines’ in Class 7. Although the word KitchenAid appeared in small lettering in the graphic representation filed by the applicant under Rule 3(4) of the Implementing Regulation, the examiner did not see it in the scanned version captured for inclusion in the register. It might have been thought that the illegibility of the word KitchenAid in the scanned image would prevent implementation of the abbreviated examination procedure. Not so. The applicant’s professional representatives wrote to the examiner invoking the procedure in the following terms:

The end result was a Community trade mark registration featuring a threedimensional shape described in the register as possessing a fanciful configuration, even though it had previously been judged unregistrable by the Office under Article 7(1)(b) and despite the fact that no claim to distinctiveness acquired through use had been made or substantiated under Article 7(3). The word element which rendered the mark eligible for registration was neither conspicuous nor legible in the registered representation, even though it formed part of the mark as registered. It is tempting to think that in these circumstances the registration should be taken to have given the proprietor no right to prevent others from using the graphically represented shape per se. Tempting, but not correct. There is no claim for invalidity. There is, in particular, no claim alleging invalidity for lack of an acceptable graphic representation under Articles 4 and 7(1)(a) CTMR. The registration must be presumed valid under Article 95. In the absence of a disclaimer, the question whether the rights of the proprietor are infringed by the use of another sign must be answered with reference to the registered trade mark as a whole, taking account of the likely perceptions and recollections of the relevant public at the time when the other sign began to be used. (Footnote: ²⁰)

In principle, it remains necessary to consider whether the rights conferred by registration of the Community trade mark reproduced in paragraph 8 above subsist in relation to a mark comprising a shape which:

functions as a trade mark for mixers embodying that shape, even without assistance from the word element KitchenAid; or

only functions as a trade mark for mixers embodying that shape with assistance from the word element KitchenAid (Footnote: ²¹); or

does not function as a trade mark for mixers embodying that shape, even with assistance from the word element KitchenAid.

The following compilation of images (Footnote: ²⁶) shows various stand mixers available for purchase in the EU in 2007:

KitchenAid mixers of substantially the same shape and appearance as the Artisan have been sold and supplied in the United States for upwards of seventy years. The ‘New Model K’ was introduced by the KitchenAid Division of The Hobart Manufacturing Co of Ohio in 1937. In an advertisement from the time (Footnote: ²⁸) it was presented as the Sensational New KitchenAid. The Food Mixer that ‘Does It All’…at an Exciting Price. The New Model ‘K’…beautiful modern lines – gleaming white Dulux trimmed in

I think it is right to infer that there were sales of the Model K through the United Kingdom branch of the Hobart company (Footnote: ³⁰), which appears to have been established by as early as 1910. Mr. Vermeiren, the Managing Director of KitchenAid Europa Inc., recollected seeing records of sales in the United Kingdom going back to 1989. However,

€39 million (2005) and €41 million (2006) with approximately €6 million, €7 million and €8 million being derived from sales in the United Kingdom in each of those years respectively. Over the same period, advertising and marketing spend for the KitchenAid brand in the EU has been at the levels of €1 million (2004), €2 million (2005) and €2 million plus (2006) with about 95% of that expenditure relating to advertising and marketing of the KitchenAid Artisan mixer. I understand it to be accepted on a rough and ready basis that the relative positions of Kenwood and Whirlpool in the stand mixer market from 2004 to 2006 were as follows:

The Artisan mixer has been promoted through in-store, point of sale, online and public relations promotions rather than by way of paid for press and television advertising. The product has also benefitted from large amounts of editorial coverage in publications that are likely to have been read by consumers of the kind who would be interested in knowing about it. I am satisfied that Whirlpool’s promotional efforts resulted in good levels of public awareness among such consumers in the United Kingdom (and, I would accept, in France and Germany). Photographic images displaying the finished appearance of the Artisan are ubiquitous in the editorial and other printed materials I have seen.

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 (Footnote: ³¹). These are examples of the kind of representations that have been used:

The KitchenAid Artisan mixer has received public exposure as an appliance seen in cooking programmes broadcast on mainstream television channels in the United Kingdom. In each episode of a series on Christmas cooking broadcast on BBC2 in December 2006 and repeated on BBC4 in December 2007 it was seen to be celebrity chef Nigella Lawson’s mixer of choice. Examples of the mixer have also been put on public display in recognition of the status of its design. It has been displayed in the Pompidou Centre in Paris and at the Science Museum in London. There is one in the kitchen display at the Smithsonian Institution in Washington. There is another exhibited in The Henry Ford Museum in Dearborn, Michigan as an example of great industrial design. In 1997 there was an exhibition at the San Francisco Museum of Modern Art devoted to 12 central icons and themes, one of which was ‘KitchenAid Mixer: Gadgets Galore’. The mixer was also written up as ‘one of the classic design icons of the early 20^th century’ in the 2005 and 2007 editions of the panel monitored handbook ‘CoolBrands. An insight into some of Britain’s coolest brands’. (Footnote: ³²)

I gather that Whirlpool has had feedback from market research identifying the aspects of the appearance of the Artisan that impinge on the recollections of consumers. (Footnote: ³³) However, I have not seen any documentary records of the information obtained. From the research work I have seen (Footnote: ³⁴) it is evident that a liking for the design of the mixer is a major factor in the appeal of the product. In the overview of perceptions found in research carried out for Kenwood in England and France in 2004 it is noted that ‘Kitchen Aid consumers love the design of their machine. They view it as a statement of them and their stylish, discerning lifestyle. A piece of equipment to show off’.³⁹

Several public surveys were undertaken by Whirlpool for the purposes of the present proceedings. They addressed the issue of distinctiveness as an aspect of perception linked to the issue of similarity. Interviewees were shown one or other of four flashcards (each of which carried a photograph of a kMix mixer) and asked to respond to the questions set out in an associated questionnaire. Responses which imported a reference to KitchenAid mixers were reviewed for significance in terms of their tendency to indicate that the shape and appearance of the kMix so closely resembled the shape and appearance of the Artisan mixer as to make them not only similar, but distinctively similar products from the consumer’s point of view. It was envisaged that questions referring to the kMix product shown in the flashcard photograph would yield answers referring to the KitchenAid product from which inferences could be drawn both as to the existence of distinctiveness (in the trade mark sense of the word) and as to the existence of overclose resemblance between the two products. Interviewees whose responses appeared to be supportive of Whirlpool’s case were identified as persons who might be worth inviting to participate, if they were willing, in a more comprehensive interview. Then, as a result of further selection, some of them were asked to provide witness statements for use at trial.

Without at this point differentiating between the public surveys, I note that 660 questionnaires were obtained, with 164 of them recording the responses of interviewees who provided sufficient contact details to enable them to be contacted again. Witness statements for use at trial were obtained from 23 of these interviewees. Others of the 164 were contacted. Their comments and observations were not disclosed in any witness statements or other documents put forward for consideration at trial. The screening of interviewees was carried out by Whirlpool’s legal advisers. Litigation privilege was claimed for that aspect of their work on the preparation of the claimants’ case. The process as a whole was referred to as a ‘witness gathering exercise’. Factual information as to the conduct of the exercise and the results obtained was provided by way of witness statements and disclosure. No attempt was made to attach statistical significance either to the results of the exercise as a whole or to the evidence of the 23 interviewees who provided witness statements. The questionnaires containing the responses of those interviewees were exhibited to their witness statements. Other questionnaires were included in the trial bundles at the instigation of the parties or at my request. However, the great majority of the 660 questionnaires were not in evidence at the trial.

The need for circumspection in the assessment of questionnaire survey evidence is well-understood. The concern is that to a greater or lesser degree: “Interviews and questionnaires intrude as a foreign element into the social setting they would describe, they create as well as measure attitudes, they elicit atypical roles and responses, they are limited to those who are accessible and will co-operate and the responses obtained are produced in part by dimensions of individual differences irrelevant to the topic at hand”. (Footnote: ³⁵) There is, accordingly, a practical requirement for information relating to the structure, method and results of questionnaire surveys to be full enough to enable the strengths and weaknesses of the research work to be evaluated. (Footnote: ³⁶) It is now the practice for the utility of any proposed survey work to be considered as a matter of case management during the interim stages of actions for infringement of registered trade mark and passing off. (Footnote: ³⁷)

If the research work provides no sufficient or proper basis for extrapolation, the responses of individual interviewees can really only be taken into account for what they may individually be thought to be worth. That may be little or nothing. This has been forcefully pointed out by the Full Court of the Federal Court of Australia (Footnote: ³⁸):

It is unrealistic to suppose that the evidence of survey respondents can be divorced from the context of the survey to which they were subjected simply by classifying the survey as ‘a witness collection exercise’. Thus the Court of Appeal observed in Scott Ltd v. Nice-Pak Products Ltd (Footnote: ³⁹):

These are the flashcards that were used for the purposes of the surveys:

The questionnaires used in conjunction with Flashcards 2 and 3 contained the following questions and instructions:

A total of 623 interviewees were questioned on various dates between 4 October and 18 November 2007 in the course of the survey work conducted by reference to Flashcards 2 and 3. (Footnote: ⁴¹) The bulk of the survey work was carried out at the BBC Good Food Show in London between 16 November and 18 November. A request for volunteers willing to be interviewed was circulated at Leiths School of Food and Wine. That led to 4 students being interviewed on 16 October. The rest of the survey work was carried out at different locations in London (Footnote: ⁴²). At the end of it all, Whirlpool tendered witness statements from 10 of the 623 interviewees who had been shown one or other of the two flashcards. These witness statements were in each case provided following a second stage interview at the London offices of Whirlpool’s solicitors.

Selected interviewees were invited to attend in return for a payment intended to cover their time and travel expenses. They were shown copies of their questionnaires and asked to expand on the answers they had given. Having done so, they were guided through a product perception study. There were, in most cases, three boxes covered in plain brown paper on the tables in the main interview room. One of the boxes was removed from the table to reveal a debranded KitchenAid Artisan mixer in red. The branding on the metal strip around the head of the mixer and the branding on the nose of the attachment hub were covered by silver masking tape. The bowl was removed and the mixer shaft was left untooled. The Artisan thus presented for inspection was a debranded embodiment in full colour of the branded mixer represented figuratively in the Community trade mark registration. The interviewees were invited to walk around the mixer and inspect it in whatever way they wished. As that was happening, they were asked a number of predetermined questions. So far as I am aware, the template for the questions has not been disclosed (Footnote: ⁴³). On completion of that part of the interview, a second box was removed from the table to reveal two kMix mixers, one in red the other in white. The process of inspection and questioning continued as before. Then the third box was removed from the table to reveal two KitchenAid Artisan mixers, one in red the other in white, with all branding and fittings visible in the usual way. The process of inspection and questioning ran its full course. The interviewees’ comments and observations were noted on a laptop computer as the interview proceeded. The laptop record was displayed for the interviewees to check and comment upon before they left. It was then used to prepare their witness statements for trial. In quite a few instances it took more than a month for the witness statements to be finalised and signed. So far as I am aware, the laptop records of the interviews have not been disclosed.

Two of the 4 interviewees who were shown Flashcard 2 provided witness statements (Footnote: ⁴⁴) that were taken as read for what they might be thought to be worth in the context of the evidence as a whole. The other two were cross-examined on their statements. (Footnote: ⁴⁵) Mrs Mansey is a chef. She owns a KitchenAid mixer. In her oral evidence she confirmed that she realised when the flashcard was first shown to her at the BBC Good Food Show that the mixer it depicted was not a KitchenAid mixer and also realised when she was subsequently shown the kMix mixers at the solicitors’ officers that they were Kenwood not KitchenAid mixers. She had been conscious of the differences between them, although she saw them as mixers of a generally similar shape. The debranded KitchenAid mixer was, as a result of her familiarity with it through use, instantly recognisable to her by its shape. She thought that if she had seen the kMix on sale in a shopping environment, the shape of it would have aroused her curiosity and made her want to find out what brand it was.

Miss Hughes is a student at Leiths School of Food and Wine. At the solicitors’ offices in London she had been shown a copy of the graphic representation reproduced in paragraph 8 above. Her witness statement recorded that she had noticed the word

Five of the 6 interviewees who were shown Flashcard 3 provided witness statements (Footnote: ⁴⁶) that were taken as read on the basis I have indicated above. The sixth interviewee was cross-examined on her statement.⁵² Ms. Bauer is an assistant merchandiser in the fashion industry. She owns a KitchenAid mixer. In her oral evidence it emerged that she was with her mother when she responded to the questionnaire at the BBC Good Food Show and that the questionnaire recorded, in part, what her mother had said on that occasion. She confirmed that she knew when the flashcard was first shown to her that the mixer it depicted was not a KitchenAid mixer because it had a very different shape. When she was subsequently shown the kMix mixers at the solicitors’ offices, she realised they were Kenwood not KitchenAid mixers. On that occasion she was concentrating on the shape of the products that were shown to her. She thought she was engaged in the assessment of a prototype for a new model from a design point of view and was not thinking about things from a brand point of view. Because she had a KitchenAid mixer at home, she recognised the debranded Artisan by its appearance as soon as it was shown to her.

The questionnaires used in conjunction with Flashcard 4 contained the following questions and instructions:

This questionnaire was used at the second stage of a three stage process. Consumers previously identified as having purchased KitchenAid mixers and consumers previously identified as interested in purchasing kitchen stand mixers were initially contacted by telephone. I shall refer to the interviewees in the first category as ‘KitchenAid users’ and those in the second category as ‘prospective purchasers’. The interviewees in both groups were asked various questions intended to weed out those who either did not own a KitchenAid mixer or had no intention of buying a mixer for £300 or more. (Footnote: ⁴⁷) Some of them will have realised that they had been targeted because they had sent off for the free cookery book that went with the KitchenAid mixer they had recently purchased. The KitchenAid users that the interviewers particularly wanted to identify were regular users who knew their mixers well. (Footnote: ⁴⁸) Although the interviews were scripted in the sense that the telephone interviewers were expected to work their way through a list of predetermined questions, (Footnote: ⁴⁹) that does not appear to have happened in all cases.

Selected interviewees were invited to attend a ‘marketing research interview’ in London. They were offered a payment intended to cover their time and travel expenses. A total of 26 interviewees were selected for interview at the offices of Whirlpool’s solicitors on 21 and 22 November 2007. At the outset, they were shown Flashcard 4 and asked the questions set out in paragraph 45 above. Their completed questionnaires were then taken through to another room for assessment by one or more of the legal team acting for Whirlpool. That resulted in 13 of the 26 interviewees being selected for participation in the third stage of the process and elimination of the remainder from further consideration.

The third stage of the process was a product perception study which followed the path I have summarised in paragraph 41 above.

At this point I think it is necessary to focus on the degree of screening involved in the three stage process. Of the 26 interviewees selected at stage one, 14 were KitchenAid users and 12 were prospective purchasers. The assessment at stage two resulted in 4 of the

At the end of stage two, the responses obtained by means of the questionnaire used in conjunction with Flashcard 4 were as noted in the following tables, with Table A covering the responses of the 4 KitchenAid users and the 9 prospective purchasers who were eliminated from the process on assessment of the answers they had given and Table B covering the responses of the 10 KitchenAid users and the 3 prospective purchasers who were selected for the third stage of interviewing.

TABLE A

I think it is clear from the responses noted in these tables that the 26 interviewees were commenting upon the aesthetic and functional aspects of the kMix shown in the flashcard either: (1) without regarding the shape or appearance of it as an indication of trade origin; or (2) without forming any or any enduring belief that the shape or appearance of it was indicative of a trade origin linked to that of the KitchenAid product they were aware of. The responses to Question 4 point to the conclusion that most of the

Nine of these 13 interviewees provided witness statements (Footnote: ⁵⁰) that were taken as read on the basis I have already indicated. The other four were cross-examined on their statements. (Footnote: ⁵¹) Mrs. Flatman is an art teacher. She is a KitchenAid owner and assumed that she had been contacted by the telephone interviewer as a result of sending off for the free cookery book that went with it. When she was first shown Flashcard 4 she thought it depicted a Krups or Kenwood mixer because she could see there was a K on the bowl. The lettering under the dial led her to think it was a Kenwood. She immediately recognised the debranded Artisan as a KitchenAid mixer by its shape, the front attachment hub and the silver bowl. She thought she was being asked to comment in relation to the look and style of the kMix. In her witness statement she said that on seeing all the mixers together she thought they looked very similar, but ’when side-by-side I think you can see they are different mixers from different sources’.

Mrs. Hershman is a housewife. She owns a Magimix mixer. Her mother has a Kenwood Chef. If she were to buy a new mixer she would buy a KitchenAid. She thought that she was being asked to compare the looks and styles and similarities of the different mixers shown to her at the solicitor’s offices. In her witness statement she said that she ‘thought the Kenwoods were trying to look like KitchenAids’. In her oral evidence she confirmed that she was commenting on the design aspects of the machines and looking for branding to work out why they looked so similar. She thought the shape, the head and the bowl made the KitchenAid machine very distinctive looking and ‘if you walk into a store, you automatically know which one it is’. Her expectation was that the similarities between the kMix and the KitchenAid would make her want to compare them if she was looking for that style of mixer.

Mrs. Banks is a company director in the television industry. She is a KitchenAid owner. When she was shown Flashcard 4 she initially thought the mixer it depicted was a KitchenAid, but realised it was a Kenwood when she looked more closely. She thought when responding to the questionnaire that she was engaged in market research about a new product design. She confirmed that she had not thought and would not have thought of the kMix as an updated version of the KitchenAid once she had seen it identified as a Kenwood. Beyond that, she thought ‘the fact the kMix looks like the KitchenAid would make me more likely to buy it’. In her witness statement she confirmed that when she was shown the debranded Artisan she immediately recognised it as a KitchenAid mixer. ‘The shape is very recognisable, quirky, it looks really old, like a 1930s mixer. It has also got a very distinctive strong chrome bowl, although there wasn’t one in the one I was shown. It has become quite fashionable and works well’.

Mrs. O’Donnell is a registrar in a Government department. She is a KitchenAid owner. The interviewer who telephoned her said something along the lines of ‘I know you have bought a mixer recently’, but did not answer when asked ‘How do you know that?’. When she was first shown Flashcard 4, Mrs. O’Donnell thought she was being asked about the prototype for a new design. She did not recognise the mixer it depicted. On thinking about it, she came to the conclusion it was a Kenwood. When she saw the debranded Artisan she immediately recognised it by its appearance as a KitchenAid mixer. She was clear in her own mind that the kMix mixers she was shown were

Two non-survey witnesses (Footnote: ⁵²) were called to give evidence of mis-identification. Mr. Morrissey is a partner in the firm of solicitors acting for Whirlpool. He was not involved in the conduct of the case. He was, however, aware that his firm was acting for Whirlpool in a contentious matter relating to a new Kenwood stand mixer and from time to time he had lunch with the trade mark advisers in his firm who were working on that matter. He had seen various mixers in boxes in their office and other offices, but did not know which side his firm was acting for and did not know that the KitchenAid mixer was a Whirlpool product. He knew what the KitchenAid mixer looked like, having previously seen examples on display in stores such as John Lewis. He was impressed by them and wanted to own one. At lunchtime on or about 6 September 2007 he dropped into the office used by his trade mark colleagues. He caught sight of an example of Flashcard 1, picked it up, looked at it and said: ‘Doesn’t it look great. I would love to have one of those appliances in the kitchen’. He was then told ‘No, that is the opposition, the kMix’. It was a very brief conversation. He did not study the photograph on the flashcard ‘forensically’ for the purpose of determining the identity of the product it depicted. I think the photograph was merely the stimulus for a passing remark about his fondness for KitchenAid mixers. The remark was too casual and there were too many special

Mr. Hutchison is based in South Africa. Having trained as a chef, he is now a hotelier. Approximately 5 years ago he bought a KitchenAid mixer on a visit to London. He is very familiar with KitchenAid mixers and would recognise them by their shape, with or without the ‘KitchenAid’ name or logo. He is a friend and business associate of Mr. Piers Schmidt, the expert witness retained by Whirlpool for the purposes of the present proceedings. They are partners in a consultancy specialising in branding in the field of hotels, tourism and real estate linked to hotels and tourism. In January 2008 Mr. Hutchison met Mr. Schmidt in London to discuss a hotel related business venture. The meeting took place in the lounge area of the Ferndale Hotel. Mr. Schmidt was already there when Mr. Hutchison arrived. He (Mr. Schmidt) had a number of files on the table in front of him. He said he was ‘working on the KitchenAid project’. Mr. Hutchison was aware, as a result of a discussion on a previous occasion, that this referred to his work as an expert witness for the makers of the KitchenAid mixer.

Mr. Schmidt showed Mr. Hutchison one of a number of photographs from the files. These were photographs in which individual images of a red KitchenAid Artisan mixer were presented for the purposes of comparison alongside corresponding images of a red kMix. The evidence as to what happened leaves me with the impression that Mr. Schmidt invited Mr. Hutchison to comment on the comparison. In each photograph, the image of the Artisan appeared under the caption ‘KitchenAid’ and the corresponding image of the kMix appeared under the caption ‘Kenwood kMix’. Mr. Hutchison looked across the table and said as he pointed to the KitchenAid ‘I have got one of those’. Mr. Schmidt then drew his attention to the other image in the photograph by a question along the lines of ‘Have you seen this?’ at which point Mr. Hutchison’s comment in relation to the kMix was something along the lines of ‘My God, what have KitchenAid done’. By that time he was holding the photograph. In his witness statement he said that he looked hard at the images. In his oral evidence he said that he looked at them very carefully. He nonetheless maintained that he did so without noticing either the KENWOOD trade mark on the front of the kMix or the caption ‘Kenwood kMix’ above the image he was looking at and therefore without realising that it was a Kenwood mixer until that was pointed out to him. I think his obliviousness to the positive identification of the kMix as a Kenwood mixer is significant and all the more so in circumstances where KENWOOD is a brand that was known to him and he actually had a Kenwood mixer in the kitchen of his apartment in Johannesburg. It appears to me that he was actively correlating the design of the kMix with that of the KitchenAid as a direct result of the context and manner in which the photographic images were put to him. I am not willing to regard that as a relevant mindset for the purposes of the assessment I am required to make.

In the period following the introduction of the kMix, both sides monitored public reaction to it in stores in the United Kingdom. Kenwood has 20 (or maybe more) in-store demonstrators. Mr. Fry, Kenwood’s Company Secretary, spoke to them (or some of them) at a training conference and made them aware of Whirlpool’s allegation that the kMix and the KitchenAid Artisan were so similar in appearance that consumers would be likely to confuse the two products. He asked them to report any such instances. The demonstrators send written reports to their manager at regular intervals. He kept in contact with her. There were, to his knowledge, no reports of any instances of confusion. He gave evidence to that effect on Day 4 of the trial. Whirlpool’s solicitors then called for disclosure of the demonstrators’ reports and any related documents covering the period since launch. I understand that approximately 2,000 pages of documents were collated and examined. (Footnote: ⁵³)

Whirlpool’s in-store demonstrators also prepare written reports for their manager. Those for the relevant period were obtained from her during the course of the trial. I understand that only one of them contained anything that might possibly be regarded as relevant. This was added to the trial bundles. (Footnote: ⁵⁴) It merely reported on arrangements for instore demonstrations of the kMix in Scotland in February 2008.

Three KitchenAid demonstrators gave evidence of public reaction to the kMix following launch. (Footnote: ⁵⁵) Mrs. Champion is primarily based at the John Lewis store in Bristol. She also visits other stores in the South West of England. Two members of the John Lewis sales staff in Bristol independently told her they thought the kMix was very similar to the KitchenAid mixer. Customers have commented to the effect that the kMix is a direct copy of the KitchenAid or in the same style as the KitchenAid. A ‘handful’ of customers have asked her whether the kMix is a new version of the KitchenAid or made by KitchenAid. No one asked her to make a contemporaneous record of any instances of confusion that she might come across in relation to the kMix. Her witness statement provided as much detail as she could remember when she prepared it from memory in February 2008 or thereabouts. She acknowledged that her memory was no better and probably worse by the time of the trial. Whilst I accept her evidence, it is not informative with regard to the exchanges between herself and the ‘handful’ of customers to which she refers.

Mrs. Pollock was until January 2008 a KitchenAid demonstrator at the John Lewis store in Bluewater, Kent. This is the second largest John Lewis store, after the Oxford Street store in London. At busy times in November and December she might sell 8 or more mixers per week. Her highest tally in the run up to Christmas would have been about 15 mixers in one week. She received ‘lots of comments’ from members of the public about the kMix. In her witness statement she said:

Mrs. Evans works as a KitchenAid demonstrator in Fenwicks at the Brent Cross Shopping Centre in North London. On two or three occasions in October 2007 members of the public who had seen the kMix on sale in the John Lewis store at Brent Cross commented on its similarity to the KitchenAid mixer. They mentioned the overall shape, colours and enamel type finish. In addition she had in March 2008 approached a female customer who was looking at a KitchenAid Artisan mixer on display in her sales area at Fenwicks. The customer asked her about the ‘free blender’ that came with it. She explained that the KitchenAid was not being offered with a ‘free blender’. The customer was adamant that she had just come from the nearby John Lewis store where she had seen it being sold with a ‘free blender’. She (the customer) then went back to check. An hour or so later she returned, saying that she had discussed the matter with the sales staff at

Each side adduced expert evidence under the permission given for ‘one additional expert in relation to the goodwill and/or reputation (if any) of the brands and/or products in issue and the impact (if any) of the products complained of’. (Footnote: ⁵⁸) This was a very broad remit. It opened the door to expert evidence directed to issues (not being issues of law) upon which the outcome of the proceedings ultimately depends. (Footnote: ⁵⁹) However, in order to be of any real value, the evidence would have to provide insight into the matters it relevantly addressed by drawing independently and objectively upon appropriate knowledge and experience. (Footnote: ⁶⁰) Moreover, the Court of Appeal has recently re-emphasised that the question of consumer confusion is not properly to be regarded as a matter for expert evidence in cases involving the marketing of ordinary goods or services to the general public. (Footnote: ⁶¹) That is the case here.

Whirlpool’s expert witness, Mr. Piers Schmidt, has extensive experience of marketing and brand consultancy. However, he has no expertise in the area of stand mixers or kitchen appliances more generally. His comments and observations were necessarily dependent on research into the matters relating to mixers that he was asked to consider⁶⁹. Those matters included the status and reputation of the KitchenAid stand mixer in the EEA and worldwide (in particular in relation to its shape and colours) and the distinctiveness (if any) of the shape and get-up (with and without bowl) of the KitchenAid stand mixer. Kenwood’s expert witness, Mrs. Trudy Watson, has extensive experience as a commercial buyer of small domestic appliances (including stand mixers) for retail sale to consumers in the United Kingdom and other Member States. It has been a key part of her work to understand the buying patterns of consumers, the relevance of brands, new design, trends in the market and ultimately what makes the consumer take the final decision to purchase one product over another.

Mr. Schmidt evidently saw it as his job to correlate the design of the kMix with that of the KitchenAid Artisan mixer to the fullest extent possible by concentrating on similarities and discounting differences. (Footnote: ⁶²) Moreover his intention was to remark on the similarities between the two products and not between those products and the rest of the market. (Footnote: ⁶³) On viewing the products through the lens of the similarities he had identified and by treating those similarities as aspects of branding, he felt able to censure Kenwood and its kMix product. His stance can clearly be seen from the language of his conclusions (Footnote: ⁶⁴):

Mrs. Watson acknowledged in her report (Footnote: ⁶⁸) that Kenwood with its kMix product is appealing to consumers at the premium end of the market and ‘is certainly trying to compete with KitchenAid for a very similar type of consumer’ for whom style and design would be an important factor in product choice. She expected them to be clear about their preference when they came to purchase in the course of the ‘real life’ process of buying an expensive stand mixer. ‘Once the consumer had had a proper look at the Kenwood kMix product the Kenwood branding would be clear to the consumer’. In crossexamination she agreed that the shape of the KitchenAid mixer is distinctive (Footnote: ⁶⁹). She agreed that the brand name KitchenAid would be ‘the handle for everything else’, including the shape in terms of which design conscious purchasers would naturally be inclined to think of the mixer (Footnote: ⁷⁰). She agreed that there is a distinct competitive advantage in being an iconic brand when selling to consumers moving from initial interest through to purchase in this sector of the market (Footnote: ⁷¹). She thought that consumers ‘might fleetingly associate the KitchenAid stand mixer with the Kenwood KMix or vice versa’ and also that having a similar ‘look appeal’ potentially attracts customers who would not have looked at the Kenwood Chef, but expected the initial reaction to be very quickly dispelled when potential customers looked properly at the products and observed the differences in style, specification and branding (Footnote: ⁷²). In circumstances where the kMix had been introduced and sold in the same premium market and to the same type of customers as the KitchenAid mixer she thought that there would have been lots of comment by customers talking to instore demonstrators about the two products comparatively and was surprised that there were not more comments than there appeared to be from the evidence before the Court (Footnote: ⁷³). Mrs. Watson gave her evidence fairly. She gave the kMix a reasonably good character reference on the basis of her experience as a commercial buyer. I take note of what she said, without regarding it as decisive of the issues I must determine from the perspective of the relevant average consumer.

I now turn to discuss the issues of distinctiveness and similarity in the light of the evidence and materials before me. My assessment takes account of the evidence and materials that were to be taken as read, as I have previously described. It also takes account of the need for circumspect evaluation of the evidence of the witnesses who passed through the special filter of the ‘witness gathering exercise’. I do not accept that the bodywork or finished appearance of the KitchenAid Artisan mixer can to any real

It is at this point necessary to consider whether Whirlpool can pursue a claim for infringement by reference to the presumed expectations of design conscious consumers. (Footnote: ⁷⁴) It was suggested on behalf of Kenwood that the relevant assessment should be made by reference to the average among all consumers in the market for all of the different types of ‘electric beating and mixing machines’ that would be covered by the Community trade mark registration in Class 7. I do not agree. The ECJ has confirmed that it is the circumstances characterising the allegedly infringing use which must be considered in order to determine the question of liability for infringement. (Footnote: ⁷⁵) It is necessary to conduct a risk assessment. The tribunal must assess the likelihood of the conduct in question giving rise to consequences of the kind proscribed. The ‘average consumer’ test standardises the approach to assessment. It does so by requiring the tribunal to judge the matter from the viewpoint of a consumer exercising neither too low nor too high a degree of perspicacity. It does not permit or require the tribunal to exclude any relevant factors from the assessment of risk. The Artisan and the kMix are both premium priced products targeted at design conscious consumers. It follows, in my view, that the question of liability for infringement can properly be determined by taking the presumed expectations of such consumers into account. To hold otherwise would be to apply a test divorced from the actualities of the case.

I am aware that in some Member States the average consumer test is regarded as a means for determining the scope of protection on a ‘normative’ or ‘regulatory’ basis. The rationale is that trade mark owners are entitled to the benefit of an exclusive right with appropriate scope of protection, just as patent owners are entitled to the benefit of an

In the context of my findings as to distinctiveness, I consider that the presence of a mark identical or similar to the denomination KitchenAid is not essential for a finding that the rights conferred by the Community trade mark registration have been infringed. And I think there is a likelihood that in the United Kingdom (and other Member States where the Artisan mixer was likewise known and recognised) a mixer replicating the finished appearance of the Artisan would, for that reason, be thought to have a commercial origin linked to that of the KitchenAid product, whether or not it carried a denomination that was identical or similar to the denomination KitchenAid. However, the kMix is not a replica of the Artisan. It is, as one of the survey respondents observed when shown Flashcard 3, ‘KitchenAid-ish’ in its appearance (Footnote: ⁷⁶). There is clearly enough similarity for each to remind people of the other. On the other hand, there does not appear to me to be sufficient similarity in terms either of their bodywork or their finished appearance to lull the relevant average consumer into thinking one is the other on seeing them together or separately at different times or in different settings. What is the effect of consumers being aware that the product they are looking at is not the product it reminds them of ? If (and I emphasise the word if) they are interested in the provenance of the mixer they are looking at, their natural reaction would be to refer to the badges of origin in the form of the word and device marks conventionally used in relation to the products for the purposes of source identification. That reflects the position that ‘average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packing in the absence of any graphic or word element’ in a market such as this, where consumers would be alive to the potential for variations in appearance to be indicative of differences in trade origin. It requires no real effort to appreciate that the Artisan is a KitchenAid product and that the kMix is a Kenwood product. 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. KENWOOD is a strong and well-established trade mark for mixers. I can see no likelihood of confusion occurring during the process leading from selection through to purchase of a kMix product. (Footnote: ⁷⁷)

The following provisions of the CTMR relate to the present claim for

A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

…

any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

The following, inter alia, may be prohibited under paragraph 1:

affixing the sign to the goods or to the packaging thereof;

offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

importing or exporting the goods under that sign; (d) using the sign on business papers and in advertising.

…

The case law of the ECJ (Footnote: ⁷⁸) establishes that the operation of Article 9(1) is confined to situations in which a third party is, without consent, using a sign identical or similar to the protected trade mark ‘in relation to’ his goods or services, in the course of commercial activity with a view to gain and not as a private matter, so as to affect or be liable to affect the functions of the trade mark and in particular its essential function as a guarantee of origin. Use ‘in relation to’ means use ‘for the purpose of distinguishing’ the goods or services in question, irrespective of whether the claim for infringement is brought under sub-paragraph (a), (b) or (c) of Article 9. (Footnote: ⁷⁹) If and insofar as the third party maintains that he is using the sign in question descriptively rather than for the purpose of distinguishing his goods or services from those of other traders, he is expected to defend himself within the scope of Article 12(b) (Footnote: ⁸⁰). In cases where the sign in question is not being used descriptively within the scope of Article 12(b), a defence to the effect that it is being used non-distinctively (for example, purely decoratively) stands or falls on the proposition that there is no use for the purpose of distinguishing any goods or services in a manner liable to affect the functions of the protected trade mark (Footnote: ⁸¹).

Kenwood maintained that the kMix embodied nothing in the nature of a ‘sign’ to which Whirlpool’s claim for infringement of its three-dimensional trade mark registration could apply. What is a sign? Something that tells you something. In Philips Electronics NV v. Remington Consumer Products (Footnote: ⁸²) Jacob J. said:

It is sufficient for the purposes of Article 9(1)(b) to establish the existence of a likelihood of confusion in only part of the Community (Footnote: ⁸⁵). The concept of ‘using in the course of trade’ is amplified by Article 9(2) in a way that appears to make it sufficient for the purpose of establishing liability under Article 9(1)(b) for there to be ‘a likelihood of confusion on the part of the public’ at any material stage or in relation to any material aspect of the commercialisation of the sign in question. From that I think it follows that ‘bait and switch’ selling can be prevented under Article 9(1)(b) on the basis that the process of buying goods or services should, from selection through to purchase, be free of the distorting effects of confusion. I mention that because Whirlpool’s claim under Article 9(1)(b) relied on the proposition that there would be a likelihood of confusion unless and until the branding of the kMix as a KENWOOD product impinged upon the consciousness of interested consumers: the shape and appearance of the kMix would initially tell them it was a ‘KitchenAid’ product and the KENWOOD branding would not tell them otherwise until after they had gone down the road of selection with a view to purchase. It is possible for a claim to succeed on that basis (Footnote: ⁸⁶). However, I do not accept that in the present case there will be any initial confusion in the mind of the relevant average consumer. There will, in my view, be nothing more than an awareness that the product they are looking at is not the one it reminds them of. I am not persuaded otherwise by the evidence of the KitchenAid demonstrators. Their evidence relating to the incidents to which they refer provides no firm basis for concluding that there is similarity between the bodywork of the Artisan and that of the kMix sufficient to give rise to a risk that the relevant public might believe the mixers come from the same undertaking or, as the case may be, from economically linked undertakings (Footnote: ⁸⁷). The claim for infringement under Article 9(1)(b) is not made out on the evidence and materials before me.

Article 9(1)(c) provides protection for Community trade marks which have a reputation ‘in the Community’. Kenwood suggested that this means a reputation across the Community as a whole or at least a large area of it (Footnote: ⁸⁸). I do not agree. In the case of a trade mark registered at the national level, protection of the kind provided by Article 9(1)(c) can be claimed for trade marks which have a reputation in the sense that they are known by a significant part of the public concerned by the products or services covered by that trade mark in the territory of registration (Footnote: ⁸⁹). Since the territory of registration is part of the Community, the trade mark has a reputation in the Community. The trade mark does not cease to have a reputation in the Community if the national registration is either subsumed within a Community trade mark registration under Article 34(2) CTMR on the basis of a valid claim to seniority (Footnote: ⁹⁰) or duplicated by a Community trade mark registration. In principle, a Community trade mark should not receive less protection than a national trade mark with a reputation in the same territory. I think that the aim should generally be to prevent conflict occurring in any substantial part of the Community (Footnote: ⁹¹) and that the United Kingdom can for that purpose be regarded as a substantial part of the Community, with or without the addition of France and Germany. It thus appears to me that Whirlpool’s Community trade mark has a reputation in the Community.

The operation of Article 9(1)(c) has recently been summarised by the ECJ (in the context of the equivalent provisions of Article 5(2) of the Trade Marks Directive) in the following terms¹⁰²:

When making the required assessment in a case such as the present it is appropriate to bear in mind that the registration of a Community trade mark cannot validly deprive third parties of the right to use signs of the kind specified in Article 7(1)(e) (Footnote: ⁹²). That Article absolutely excludes from protection by registration:

In a nutshell, Whirlpool objects to the bodywork of the kMix on the basis that it is a lookalike which comes too close to the Artisan. For the purpose of deciding whether the sign and the mark are too close, it is necessary to bear in mind that distinctiveness and similarity are different concepts which must each be weighed appropriately when making the required global assessment. (Footnote: ⁹³) That is necessary because the Community trade mark system establishes a regime for protection in which (say) 50% similarity to a ‘strong’ mark may be just as objectionable as (say) 75% similarity to a ‘weak’ mark. In the overall assessment there could be a finding that the bodywork of the kMix and that of the Artisan were too close if upon weighing distinctiveness and similarity factorially it was concluded: (1) that the shapes were relevantly similar (by being similar in respects related to the distinctiveness of the protected trade mark); and (2) that they were sufficiently similar (by being relevantly similar to a degree which impinged upon the distinctiveness of the protected trade mark) to satisfy the ‘specific condition’ for liability under Article 9(1)(c).

As I have said, I consider there is enough similarity between the bodywork of the kMix and that of the Artisan for each to remind people of the other whilst leaving them aware that the one they are looking at is not the one it reminds them of. Is that ‘similarity between the sign and the mark’ resulting in ‘the establishment of a link’? Left to my own devices I would have regarded it simply as a calling to mind, rather than the establishment of a link. However, in view of the approach to cross-referential use recently adopted by the ECJ (Footnote: ⁹⁴) and taking account of the observations of Advocate General Sharpston in her recently delivered Opinion in the Intel case, (Footnote: ⁹⁵) I think the mnemonic effect I have described should be taken to involve ‘the establishment of a link’. Is it a link which is liable

to take unfair advantage of the distinctive character or repute of the trade mark represented by the bodywork of the Artisan mixer?

to be detrimental to the distinctive character of repute of the represented by the bodywork of the Artisan mixer?

The claim in passing off relates, as I have said, to the finished appearance of the

that the claimant’s goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;

that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and

that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.

It was suggested that there might be liability for trade mark infringement or passing off as a result of the marketing of a special edition of the kMix, even if there was no such liability in relation to the KENWOOD branded KMix shown in paragraph 6 above. The special edition was a kMix bearing the trade mark AGA in lieu of KENWOOD beneath the dial and carrying the following wording on the backplate: special edition by KENWOOD. (Footnote: ⁹⁸) The special edition is marketed through AGA cookware shops. (Footnote: ⁹⁹) It displaced the KitchenAid Artisan mixer in their shops. I can well understand why this was commercially disconcerting from Whirlpool’s point of view. However, on considering the evidence relating to the changeover and such evidence as there is in relation to the marketing of the special edition I cannot see any reason why it should not stand on the same footing with regard to liability as the KENWOOD kMix I have considered above. There are no additional concerns that I can identify with regard to the introduction or marketing of the special edition.

The parties did not ask me to refer any questions of Community law to the ECJ under Article 234 of the EC Treaty. I for my part have considered it appropriate to determine the issues arising without making an order for reference. For the reasons I have given the action will be dismissed. I will hear submissions as to the appropriate form of order in the light of the judgment I have given.