Trade mark decision

BL Number
Decision date
13 September 2006
Hearing Officer
Mr R Colombo
Philips Electronics NV
Remington Consumer Products Ltd
Section 3(1)(a) & (b) & Section 3(2)(a) & (c) & Section 3(3)(a)


Section 3(1)(a) & (b): Opposition successful. Application refused. Section 3(2)(a) & (c): Section 3(3)(a):

Points Of Interest

  • See also BL O/002/99


During the course of these proceedings the applicant (Philips) commenced infringement proceedings against the opponent (Remington) in the High Court on the basis of a prior registration of a two dimensional representation of a three headed razor. Remington counterclaimed that the registration was invalid and the Court found in favour of Remington.

On the basis of the High Court decision Remington contended that the opposition proceedings before the Registrar were res judicata as the issues were similar. Philips disputed this view and sought to stay the proceedings pending the outcome of an appeal to the Court of Appeal.

Following a hearing the Registrar decided that the opposition proceedings in the Registry should be stayed pending the outcome of Philips appeal and that res judicata did not apply. This decision was upheld on appeal to the High Court. Remington filed a notice of appeal to the Court of Appeal.

In may 1999 the Court of appeal found in Remington’s favour but decided to refer number of issues to the European Court of Justice The Court of Appeal also issued an order to stay is decision until the ECJ reported.

In October 2003 with the agreement of the Registrar, Philips and Remington agreed to withdraw their appeal to the Court of Appeal and that these opposition proceedings be stayed pending the final outcome to the dispute between the parties. It was also agreed that, depending on the outcome of the proceedings before the High Court, Philips would consent to the dismissal of the opposition if it was unsuccessful in the High Court.

The proceedings before the Court of Appeal have now been concluded in favour of Remington and Philips have been refused permission to appeal to the House of Lords. The Hearing Officer therefore decided on the basis of the Agreement referred to above that Philips application should be refused and costs awarded to Remington.

Full decision O/258/06 PDF document21Kb