UK: A Shave too Close for Philips as ECJ Refuse to Extend Monopoly in a Trade Mark to 3D Products

Last Updated: 18 June 2002
Article by Joel Smith
Today, the European Court of Justice (ECJ) ruled against Philips in a long-running dispute with rival Remington over the protection conferred by a trade mark of a picture of a product shape over manufacture of 3D products.

Philips, the well-known manufacturer of electric shavers, registered a picture of the three-headed configuration of its rotary shaver as a UK trade mark. In the 1990s, Remington introduced its own version of a rotary shaver, a design previously unique to Philips. Given that Philips’ patents had then expired, Philips sought to rely upon its trade mark rights to prevent Remington from manufacturing a competing product. In 1995, Philips sued Remington for trade mark infringement under the Trade Marks Act 1994 and, in response, Remington counter-claimed alleging the invalidity of the trade mark.

The case was first heard by Mr. Justice Jacob in the High Court in 1997. Jacob J was concerned at the prospect of Philips obtaining, what would amount to be, a permanent monopoly in an engineering design and being able to prevent 3D reproductions by any competing business. He found in favour of Remington, ruling that Philips’ trade mark was invalid as it was:

  • incapable of distinguishing the goods of Philips from that of another trader and was inherently devoid of distinctive character (s.1(1), 3(1)(a) and 3(1)(b) of the Act) – it merely served to indicate that this was a three-headed rotary shaver, not that the goods were from Philips;
  • not registrable as it consisted merely of a picture denoting the kind of goods or intended purpose of the goods and the trade mark had not acquired distinctive character through use (s.3(1)(c));
  • not registrable as it amounted to a sign which consisted exclusively of:
    • the shape of goods which is necessary to obtain a technical result; and
    • the shape which gives substantial value to the goods (s.3(2))

Jacob J also doubted whether Remington infringed the trade mark (even if valid), as reproducing the three-headed design was legitimate descriptive use (even if Remington had copied Philips’ design) and may not have amounted to "trade mark" use.

Philips appealed. Whilst the Court of Appeal upheld the reasoning of the High Court, a reference was made to the ECJ for clarification.

Whilst a complex set of questions was referred to the ECJ, the most important issues are:

  • Is there a category of trade mark that is inherently non-registrable (which neither could be capable of distinguishing the trade mark proprietor’s goods from another trader’s, nor acquire distinctive character through subsequent use)?
  • Can the restriction upon registration of a trade mark, if the sign consists exclusively of the shape of goods which is necessary to obtain a technical result, be overcome, if it can be shown that there are other shapes which can obtain the technical result?

The Judgment of the ECJ

  1. There is no class of trade marks having a distinctive character by their nature or their use which is not capable of distinguishing goods/services. To be registrable under Art. 2 of the Trade Marks Directive, the shape must simply be capable of distinguishing the product of the trade mark proprietor from those of others. A trade mark for a shape may be capable of distinguishing a product even if it purely denotes the functional purpose (without any embellishment). Even if a trade mark is incapable of distinguishing the goods/services of the proprietor under Art. 3(1)(b)(c) or (d) of the Directive, then the trade mark may acquire distinctive character through use. In terms of quantifying whether a trade mark has acquired distinctive character, the Windsurfing Chiemsee factors are relevant, that of: market share; how intensive, widespread and long-standing the use has been; the amount invested in promoting the mark; the proportion of "average consumers" identifying the goods as belonging to the trade mark proprietor; and industry/trade recognition. Where a significant proportion of the relevant class of person associate the shape with the trader and no other business, then this may be sufficient to give the sign a distinctive character.

  2. In contrast, if a trade mark is refused registration under Art. 3(1)(e) of the Directive on grounds of its shape, then it can never acquire distinctive character through subsequent use to be registered (under Art. 3(3)). It is irrelevant that there are other shapes which would allow the same technical result to be obtained. The provision is designed to prevent a trade mark proprietor from gaining a monopoly over a technical solution or the functional characteristics of a product and blocking/limiting competitors from freely offering for sale products incorporating the same technical solution or functional characteristics. It reflects the legitimate public interest in not allowing persons to use registration of a trade mark to acquire or perpetuate exclusive rights to technical solutions.
This is an important decision confirming the UK courts view that the purpose of trade mark law is not to allow companies to grant/extend their monopoly in a technical solution or functional characteristic by virtue of registration of a trade mark for a shape. The invention embodied by a product or its design is properly to be protected for a limited duration as a patent or registered design.

The ECJ has confirmed the expansive approach to registration of a trade mark laid down by the ECJ in BABY-DRY (and adopted formally yesterday in practice notes issued by the UK Trade Marks Registry). The class of signs which are inherently non-registrable as trade marks are limited under the Directive, as generally a trade mark may become distinctive through use.

However, the ECJ in Philips failed to provide the long-awaited answer to the question of whether trade mark infringement requires use of a sign in a trade mark sense - this has been left to the ECJ in its judgment later in the year in Arsenal v. Reed (see the Advocate-General’s Opinion last Thursday in this case, which was reported in Herbert Smith’s IPnewsflash dated 17.06.02).

© Herbert Smith 2002

The content of this article does not constitute legal advice and should not be relied on as such. Specific advice should be sought about your specific circumstances.

For more information on this or other Herbert Smith publications, please email us.

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