Whirlpool has failed to take Kenwood's new kMix out of the market with its claims of trade mark infringement and passing off. Whirlpool brought proceedings against Kenwood after it launched its new kMix mixer in July 2007. Whirlpool alleged that the shape of Kenwood's new mixer infringed its Community Trade Mark for the three-dimensional shape of its mixer 'KitchenAid'. It argued that Kenwood's new mixer had impacted on Whirlpool's trade and Kenwood had obtained a competitive advantage as a result of the similarity between the mixers. This, said Whirlpool, was evidence that Kenwood had secured an unfair advantage of the distinctive character or repute of Whirlpool's CTM. The High Court had found that although there was a degree of similarity between the mixers, there was no likelihood of confusion in the mind of consumers as to their origin or potential for damage to the distinctive character or repute of Whirlpool's mark.
The Court of Appeal stated that this was not a case where Kenwood had clearly intended to take advantage of the distinctive character and repute of Whirlpool's marks. Indeed, Whirlpool had not made any relevant allegation of Kenwood's intention. The fact that Kenwood had planned its entry into a market in which it knew that Whirlpool's KitchenAid had a monopoly was not in itself sinister. The Court of Appeal found that Kenwood had already established its own goodwill in kitchen appliances and took the view that Kenwood would not have wanted people to think it was copying Whirlpool's design. The Court of Appeal ruled that, even if Whirlpool could show that Kenwood had obtained an advantage, this was not sufficient. For the advantage to be categorised as unfair, there must be some added factor which might be shown by something other than intention. The Court of Appeal concluded that there was no advantage obtained by Kenwood and, to the extent that there was, it was not unfair.
The case suggests that it will be difficult to show that unfair advantage of a mark's distinctive character or repute has been taken. The Court of Appeal did also not address what factors, other than clear intention, will categorise the advantage as being unfair.
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