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

Author:Mr Joel Smith
Profession:Herbert Smith
 
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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.

Background

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.

Issues

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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