Conical Cup Conundrum

The claimant in this action, George East Housewares Ltd (“ GEH”), owns the widely recognised UK brand ‘TALA’ which has been used in relation to conical kitchen measuring cups since 1934. The cups are known for their conical shape with a small curved base. In 2013, GEH became aware that the defendants had starting manufacturing and selling highly similar conical measuring cups. GEH engaged in some pre-action correspondence with the defendants and secured their agreement that the goods complained of would not be restocked. However, upon discovering in mid-2015 that the defendants had in fact taken delivery of a further 2000 cups of the same shape, albeit that these had an alternative design on the exterior, GEH then issued proceedings for passing-off in the Intellectual Property Enterprise Court (IPEC) In pursuing their passing-off claim, GEH had to demonstrate the ‘classic trinity’ of elements from the Jif Lemon case, these being the existence of:

goodwill in the shape or get-up of the cup (which excluded use of the brand name TALA);
misrepresentation to purchasers that the goods were from or associated with GEH;
damage suffered by GEH as a result.

Recent precedent such as the London Taxi case teaches us that it is no easy feat to establish that goodwill exists in relation to the mere appearance or shape of a product i.e. its trade dress or “get-up”, such that that particular feature alone is understood by consumers as conveying an indication of trade origin. This is particularly so where such trade dress/get-up is consistently used in conjunction with a brand name or logo, as those features must still be capable of indicating trade origin even if the brand name is missing. Naturally, the defendants denied that GEH had any goodwill in relation to the get-up of the measuring cups. They acknowledged that some of the words used on the cups (e.g. TALA) were distinctive to GEH, but they highlighted that the brand name had not been used by them. In considering the matter, the court split the get-up of GEH’s cup into three key features (excluding the brand name displayed upon it), namely:

the conical shape of the cup with its shiny finish and circular base;
the stripey get-up of the exterior of the cup; and
the get-up of the interior of the cup including the display of vertical measurement tables.

The court also considered whether GEH could rely on passing off in relation to one of the individual elements of the cup (i.e. the shape alone) or whether it had to rely on a combination of all of them. Without a direct answer, it seems that one could rely on an individual element. Ultimately, the court found that there was nothing in the evidence submitted by GEH which supported the notion that the shape of the cup alone identified the trade origin of the product. There was no evidence that members of the public had been educated to recognise the shape alone of the measuring cups to identify a TALA cup. Accordingly, GEH failed to establish the requisite goodwill in relation to the shape alone, nor any of the other individual features of the product’s get-up. Despite determining that there was no goodwill, the court went on to consider whether there had been any misrepresentation and damage. Although the court found the interior of the cups highly similar, and that the exterior was similar to some extent, with some noticeable differences, and despite the evidence of actual confusion presented by GEH, the court found that there was no misrepresentation. Accordingly, they also found there was no damage. This case is interesting for a number of reasons, in the first instance it is somewhat surprisingly that the court found no misrepresentation – this came despite their comments throughout the decision in relation to identity/similarity of elements of the cups. Also, and perhaps more importantly, this case reminds us to determine at the outset what it is that businesses are most concerned about – here GEH were obviously most concerned about the get-up of their cup, but their use of multiple different get-ups on their cups, alongside the TALA brand which always appeared on them, was ultimately their stumbling block in failing to establish goodwill for the get-up alone. With the benefit of this judgment, it seems that if a trader is particularly concerned about the shape/get-up of their product, they should look to market this product in a particular way, perhaps without the brand name – a concept which is naturally at odds with attempting to build a reputation in the brand for the purposes of trademark infringement.

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