A Shave too Close for Philips as ECJ Refuse to Extend Monopoly in a Trade Mark to 3D Products
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
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
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
the shape of goods which is necessary to obtain a technical
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...
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