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 design was functional.
Held: A sign consisting exclusively of a product’s shape was unregistrable, if it was established that the essential functional features of that shape were attributable only to the technical result. Additional embellishments did not make it registerable, and the existence of alternate ways of achieving the same technical result did not allow registration. The court accepted that art.3(1)(a) imports both limbs of art.2. Distinctiveness is, therefore, an issue under both art.3(1)(a) and art.3(1)(b). Only a single question is posed in relation to distinctiveness of origin, which is whether the sign is capable of distinguishing the goods of one undertaking from those of another in the mind of the consumer, and a positive conclusion (albeit at that level of identification) is required.
Judges:
GC Rodriguez Iglesias, P. Jann, F. Macken, N. Colneric, S. von Bahr, C. Gulmann, D. A. O. Edward, A. La Pergola, J.-P. Puissochet, J. N. Cunha Rodrigues etc
Citations:
Times 20-Jun-2002, C-299/99, [2002] ETMR 955, [2002] EUECJ C-299/99, [2003] Ch 159, [2003] RPC 2
Links:
Statutes:
Jurisdiction:
European
Citing:
Reference from – Philips Electronics Nv v Remington Consumer Products Limited CA 5-May-1999
The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark. . .
See Also – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another ChD 21-Oct-2004
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 . .
Cited by:
Cited – David West Trading As Eastenders v Fuller Smith and Turner Plc CA 31-Jan-2003
The appellant sought a declaration of invalidity as regards the defendant’s registered mark ‘ESB’. It was claimed to have come to be used as a general designation of certain kinds of beer.
Held: The Philips decision appeared to supercede the . .
Referred to – Philips Electronics Nv v Remington Consumer Products Limited CA 5-May-1999
The court referred to the European Court of Justice the question of whether the arrangement of three heads on a razor was functional, and so was not capable of protection as a trade mark. . .
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – Dyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
Cited – Nichols plc v Registrar of Trade Marks ECJ 16-Sep-2004
The applicant sought to register the name ‘Nichols’ as a trade mark for food and drink vending machines. The application was rejected as being common. The registrar had checked in the London telephone directory and discovered that the name appeared . .
Cited – Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another ChD 21-Oct-2004
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 . .
Cited – 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 . .
Lists of cited by and citing cases may be incomplete.
European, Intellectual Property
Updated: 06 June 2022; Ref: scu.174036