Philips Electronics NV v Remington Consumer Products Limited
Date
18 June 2002
Legislation
Trade Marks Directive (89/104) Arts 2, 3
Keywords
Absolute grounds; trade mark function; 3D trade marks; technical result; distinctive character; intended purpose
Counsel
Henry Carr QC, Simon Thorley QC, Roger Wyand QC, Daniel Alexander
Solicitors:
Allen & Overy; Lochners Technology; Treasury Solicitor
Judge:
GC Rodriguez Iglesias (President)
Court:
European Court of Justice
Reported:
[2002] All ER (EC) 634, [2002] CMLR 52, [2002] ETMR 81, [2003] RPC 2
Summary:
A reference was made under Article 234 EC in the context of proceedings for infringement of the Claimant's registered trade mark, being a three-dimensional mark of the top of a three-headed rotary shaver. A number of questions relating to the proper interpretation of the Trade Marks Directive (89/104) were given the following answers:
There is no category of marks which is not excluded from registration by Arts. 3(1)(b), [devoid of any distinctive character] (c) [designating intended purpose] and (d) [customary signs] and Art. 3(3) which is nonetheless excluded from registration by art. 3(1)(a) [signs which cannot constitute a trade mark] on the ground that such marks are incapable of distinguishing the goods of the proprietor of the mark from those of other undertakings.
In order to be capable of distinguishing an article for the purposes of Art. 2, the shape of the article in respect of which the sign is registered does not require any capricious addition such as an embellishment which has no functional purpose.
Extensive use of a sign consisting of the shape of particular goods may be sufficient to give the sign distinctive character where a trader has been the only supplier of those goods to the market, where a substantial proportion of the market associates that shape with that trader and no other.
A sign consisting exclusively of the shape of a product is unregistrable by reason of Art. 3(1)(e) [signs which consist exclusively of the shape which results from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the goods] if the essential functional features of that shape were attributable only to the technical result.