The Dutch electronics company Philips began developing electric razors in 1937. Two years later they introduced their first model to the market, a single headed rotary shaver. This was followed by a two headed rotary shaver and, in 1966, by a three headed product in which the heads were arranged in a triangular pattern which projected slightly above a triangular base plate. The three headed model was sold under the trade mark Philishave and soon became highly successful accounting for about 30% of the world's electric shaver market. In the UK, Philips' annual sales of Philishave razors had reached about 2 million by 1989 and, although this had fallen significantly (to about 400,000) by 1996, there is no doubt that the Philishave three headed razor was well known as a product made by Philips both prior to and during the 1990s in the UK. The clear association between this form of electric razor and Philips was assisted, in no small measure, by the lack of competing three headed shavers on the UK market during the period 1966 to 1995.
In 1985, in order to reinforce their monopoly, Philips registered a trade mark consisting of a picture of a three headed razor in the UK (registration no. 1254208). In spite of this, Philips' monopoly was finally challenged in 1995 when Remington introduced their own three headed electric shaver, the DT55, to the UK market. Not surprisingly, Philips sued Remington for trade mark infringement and, in response, Remington sought to invalidate UK1254208 on various absolute grounds.
In 1999, the English Court of Appeal found in favour of Remington and cancelled UK1254208 on the basis of Sections 3(1)(a), 3(1)(b), 3(1)(c) and 3(2)(b) of the 1994 Trade Marks Act, which are derived from Articles 3(1)(a), 3(1)(b), 3(1)(c) and 3(1)(e) of the European Union's Trade Marks Harmonisation Directive (89/104) (Philips Electronics NV v Remington Consumer Products Ltd). The Court ruled as follows:
The fact that a trade mark has by use become such as to denote goods of a particular trader did not necessarily mean that it was capable of distinguishing the goods of that trader from those of others.
A person who had had a monopoly use of a trade mark for many years might be able to establish that it did in fact denote his goods exclusively, but that did not mean that it had a feature which distinguished his goods from those of a rival who subsequently came into the market.
The shape of an article could not be registered in respect of goods of that...