Germany: Philips vs. Remington: The Modern Face of Trademarks II

Last Updated: 26 August 2002
Article by Claus Eckhartt

The concept of trademark protection for the shape of products or their packaging by way of a registration is a concept essentially novel to most European jurisdictions. In particular, trademarks consisting of the shape of the goods themselves raise a multitude of questions which have, to date, remained largely unanswered. The great volume of such trademark applications pending before the national trademark offices and the OHIM in Alicante as Community trademark applications show that guidance as to the protectability of such marks and their scope of protection is needed. This article deals specifically with a recent decision by the European Court of Justice ("ECJ") concerned with trademark protection in respect of technical pre-determined configurations. Reference is made in that respect to an earlier Article which appeared in this publication in February 1998 ("Philips vs. Remigton: The modern face of trademarks a close shave for rotary shaver manufacturers"(name author?).

With its decision of June 18, 2002 the ECJ has shed light on the issue as to what criteria apply for assessing the exclusion from registrations of "signs which consist exclusively of a shape of goods which is necessary to obtain a technical result" as set out in the second indent of Art. 3 (1) (e) of the First Council Directive (89/104 EEC) of 21 December 1988 to approximate the laws of the Member States relating to trademarks ("the Directive"). In answering various questions referred to it by the Court of Appeal (England and Wales) (Civil Division), the ECJ has provided clarification as to the interpretation of Art. 3 (1) and (3), 5 (1) and 6 (1) (b) of the Directive.


These issue arose in a dispute between Koninklijke Philips Electronics N.V. ("Philips") and Remington Consumer Products Ltd. ("Remington") relating to a court action for infringement of a trademark which Philips had registered in the UK. The latter trademark consists of a graphic representation of the shape and configuration of the head of a three-headed rotary electric shaver developed by Philips in the sixties, which comprises three circular heads with rotating blades in the shape of an equilateral triangle. In 1995, Remington commenced to produce and sell in the UK its electric shaver model DT 55, also comprising the rotating heads forming an equilateral triangle, shaped similarly to that of Philips. Philips subsequently sued Remington for infringement of its trademark. Remington filed a counter-claim for revocation of the trademark registered by Philips. The decision of the High Court of Justice of England and Wales, Chancery Division (Patents Court) (United Kingdom) ("the High Court"), granted the counter-claim and ordered revocation of the trademark registration of Philips on the ground that the sign was incapable of distinguishing the goods concerned from those of other undertakings and was devoid of any distinctive character. Furthermore, the High Court took the position that the trademark consisted exclusively of a sign which served in trade to designate the intended purpose of the goods and of a shape which was necessary to obtain a technical result and which gave substantial value to the goods. Philips subsequently filed appeal to the Court of Appeal (England and Wales) (Civil Division) ("the Court of Appeal"). In the following, the Court of Appeal stayed the proceedings and referred to the ECJ in total seven questions. The ECJ provided answers to the first four questions:

1. Is there a category of marks which is not excluded from registration by Article 3(1)(b), (c) and (d) and Article 3(3) of council Directive 89/104/EEC which is none the less excluded from registration by Article 3(1)(a) of the Directive (as being incapable of distinguishing the goods of the proprietor from those [of] other undertakings)?

2. Is the shape (or part of the shape) of an article (being the article in respect of which the sign is registered) only capable of distinguishing for the purposes of Article 2 if it contains some capricious addition (being an embellishment which has no functional purpose) to the shape of the article?

3. Where a trader has been the only supplier of particular goods to the market, is extensive use of a sign, which consists of the shape (or part of the shape) of those goods and which does not include any capricious addition, sufficient to give the sign a distinctive character for the purposes of Article 3(3) in circumstances where as a result of that use a substantial proportion of the relevant trade and public

a) associate the shape with that trader and no other undertaking;

b) believe that goods of that shape come from that trader absent a statement to the contrary?

4. (a) Can the restriction imposed by the words if it consists exclusively of the shape of goods which is necessary to achieve a technical result appearing in Article 3(1)(e)(ii) be overcome by establishing that there are other shapes which can obtain the same technical result or

(b) is the shape unregistrable by virtue thereof if it is shown that the essential features of the shape are attributable only to the technical result or

(c) is some other and, if so, what test appropriate for determining whether the restriction applies?<

Since the Court of Appeal made it clear that consideration of the questions relating to the infringement would not be required if its interpretation of Article 3 would be upheld by the ECJ, no reply was given to the fifth, sixth and seventh questions in view of the fact that the answer to the fourth question confirmed that interpretation. The surprisingly clear answers to the questions one to four and the underlying considerations warrant an analysis. While the ECJ essentially reiterates its opinion already set out in previous judgements, namely the "Windsurfing Chiemsee"1) and "Canon"2) decision, new ground is covered in particular in relation to the interpretation of the second indent of Article 3(1)(e) of the Directive. That provision is relevant especially in relation to trademark protection of technical configurations:

No category of trademarks which is not excluded from registration by Article 3(1)(b),(c) and (d) and Article 3(3) of the Directive which is none the less excluded from registration by Article 3(1)(a) of the Directive

In responding to the first question, the ECJ very clearly stated that there is no category of marks which is not excluded from registration by Article 3(1)(b),(c) and (d) and Article 3(3) of the Directive which is none the less excluded from registration by Article 3(1)(a) thereof on the ground that such marks are incapable of distinguishing the goods from the proprietor of the mark from those of other undertakings.

In its reasoning, the ECJ highlights the essential function of a trademark, namely to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or services from others which have another origin and to offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality. In effect, as the ECJ has asserted previously in the "Canon" decision, the essential function of a trademark is two-fold: identity of origin and quality guarantee. The ECJ then reiterates its observations previously made in the "Windsurfing Chiemsee" decision stating that just as distinctive character is one of the general conditions for registering a trademark according to Article 3(1)(b), distinctive character acquired through use means that the trademark must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.

With reference to the wording of Article 3(1)(a) and the structure of the Directive, the ECJ then comes to the only logical conclusion that a sign which is incapable of distinguishing cannot have a distinctive character.

No requirement of any capricious addition in order to be capable of distinguishing an article for the purposes of Article 2 of the Directive

By its second question, the referring court seeks to ascertain whether the definition of a trademark as set out in Article 2 of the Directive means, as regards the requirement of capability to distinguish, that they must contain some arbitrary element, such as an embellishment with no functional purpose.

Here again, the ECJ comes to a clear conclusion in finding that the shape of the product in respect of which the sign is registered does not require any capricious addition which has no functional purpose. Apart from again highlighting the primary function of a trademark as set forth in Article 2 of the Directive, the ECJ states that there is no distinction between different categories of trademarks and that the criteria for assessing the distinctive character of the three-dimensional trademarks are therefore no different from those to be applied to other categories of trademarks. In that context, it is emphasized that the Directive does not require that the shape of the product in respect of which the sign is registered must include capricious additions. The shape in question must simply be capable of distinguishing the product of the proprietor of the trademark from those of other undertakings.

Extensive use of a sign consisting of the shape of a product may be sufficient to give sign distinctive character in the sense of Article 3(3) of the Directive

With respect to the third question, the ECJ states that if a shape is refused registration pursuant to Article 3 (1)(e) of the Directive, it can under no circumstances be registered by virtue of Article 3(3). With equal clarity, the ECJ holds that a trademark which is refused registration under Article 3(1)(b)(c) or (d) may acquire a distinctive character which it did not have initially and may thus be registered according to Article 3(3) of the Directive.

According to the ECJ, the distinctive character of a mark must be assessed in relation to the goods or services in respect of which registration is applied for. Reference is subsequently made to the judgment "Windsurfing Chiemsee", where the following was inter alia taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

In the "Windsurfing Chiemsee"- decision the ECJ also held that if, on the basis of the afore-mentioned criteria, the competent authority finds that the relevant class of persons, or at least a significant portion thereof, identify goods as originating from a particular undertaking, it must decide that the requirement for registering the mark as set out in Article 3(3) of the Directive is fulfilled. The data to be submitted cannot be of a general nature such as predetermined percentages, but has to be specific and directly relevant to the case.

A further prerequisite identified by the ECJ is that the distinctive character of a sign consisting in the shape of a product must be assessed in the light of the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect, a prerequisite ascertained in the "Gut Springenheide" 3)decision.

A sign consisting exclusively of the shape of a product is unregistrable if the essential functional features are attributable only to the technical result.

The forth question put forward by the referring court to the ECJ touched upon the core of the issue contentious between the parties. The objective of the question is to find an answer whether Article 3(1)(e), second indent, of the Directive must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue of that provision if it is established that the essential functional features of the shape are attributably only to the technical result. Furthermore, clarification is sought as to the question whether the ground for refusal or invalidity can be overcome by establishing that there are other shapes which obtain the same technical result.

In answering these questions, the ECJ first of all points out that the grounds for refusal to register signs consisting of the shape of a product as set out in Article 3(1)(e) of the Directive are exhaustive, as could be seen from the seventh recital in the preamble to the Directive. While marks which were refused registration on the grounds set out in Article 3(1)(b), (c) or (d) of the Directive may be registered on the basis that they have acquired a distinctive character through use under Article 3(3), a sign which is refused registration under Article 3(1)(e) of the Directive can never acquire a distinctive character. From this the ECJ follows that Article 3 (1)(e) concerns signs which are not susceptible to trademark protection. Having established this, the ECJ states that the grounds for refusal laid out in Article 3 of the Directive must be seen in the light of the public interest underlying each of them. The rationale of Article 3(1)(e) of the Directive is to prevent the granting of a monopoly on technical solutions or functional characteristics of a product to the proprietor. The protection given by the trademark right should not be extended so far as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition which the proprietor of the trademark. The provision of Art. 3(1)(e), second indent, of the Directive had the purpose to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trademark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in respect of the technical solution they desire to adopt in order to incorporate such a function in their product. The ECJ concludes that a shape whose essential characteristics perform a technical function and which were chosen to fulfill that function should be used freely by all competitors, an aim which is in the public interest. This position reflects the legitimate aim of not allowing individuals to use the registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions. Therefore, even if that technical result can be achieved by other shapes, registration of a sign consisting of that shape is precluded, where the essential functional characteristics of the shape of a product are attributable solely to the technical result. Article 3(1)(e), second indent, of the Directive does not contain language allowing a different interpretation.

© by Claus Eckhartt, 2002. Claus Eckhartt is an attorney-at-law with the Intellectual Property Law Firm Bardehle Pagenberg Dost Altenburg Geissler Isenbruck in Munich.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.