The claimant alleged infringement of its trade mark. It registered a two dimensional mark which represented its razor which had three rotary blades on the head of the razor. The defendant manufactured and sold a similar design, and counterclaimed for a declaration that the mark was invalid.
Held: The mark was invalid in that it breached the prohibition on marks consisting exclusively of the shape of goods necessary to the technical effect of the goods. That the defendant could not show that each and every element represented did not have such a part to play did not invalidate the mark. The clover leaf feature was not an essential feature of the shape represented in the 452 Mark and the clover leaf, as a feature of the overall shape of the goods, it did not have ‘distinctive eye impact.’ The shape of the faceplate as a whole was necessary to obtain a technical result. ‘ The three marks are minimalist in design, but they are registered in class 8 in respect of shaving apparatus and I consider that I am entitled to consider the section 3(2)(b) issue by reference to their actual use, and to the evidence relating to it, which is use on the packaging of three-headed rotary shavers and in advertising material for such shavers. It is no surprise that the evidence from the consuming public is that they recognise the shapes (or at any rate the 316 mark, which is the one that appears to have received most exposure) as representing the head of the Philips three-headed shaver: that is obviously what Philips intended and that is what the public has understood. I agree with Mr Wyand that the marks show the same picture, and therefore the same shape as the 208 mark minus the detail. The 208 mark is itself a picture of merely part of a shaver and I accept that the three marks now in question portray an even lesser part (in particular, they do not show the side of the shaver head, merely its top). But I cannot see that this makes any material difference. The section 3(2)(b) exclusion applies to shape marks whose essential features are solely attributable to obtaining the technical result. The three marks in question are minimalist representations of shapes whose essential features are so attributable: they show three cutting heads and a faceplate in the shape of the 208 Mark and that mark has been excluded from registration by section 3(2)(b). I hold, therefore, that the registration of each of the marks is invalid and I will order their revocation.’
Judges:
Rimer J
Citations:
Times 02-Nov-2004
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd ECJ 18-Jun-2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the . .
Cited by:
See Also – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd ECJ 18-Jun-2002
The claimant developed a three headed rotary razor for men. They obtained registration of the arrangement as a trade mark. They sued the defendant for infringement, and the defendant countered challenging the validity of the registration, saying the . .
Appeal from – Koninklijke Philips Electronics Nv v Remington Consumer Products Ltd and Another CA 26-Jan-2006
The court was asked whether a trade mark consisting of the shape of goods (a three headed rotary electric shaver) could be valid. In earlier proceedings a representation had been found incapable of registration representing only the function of the . .
Cited – Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 28 May 2022; Ref: scu.220102
