Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Rimer,MR JUSTICE RIMER |
| Judgment Date | 21 October 2004 |
| Neutral Citation | [2004] EWHC 2327 (Ch) |
| Docket Number | HC 2000 No. 00678 |
| Court | Chancery Division |
| Date | 21 October 2004 |
[2004] EWHC 2327 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Mr Justice Rimer
HC 2000 No. 00678
Mr Henry Carr QC and Mr Piers Acland (instructed by Messrs Hale and Dorr LLP) appeared for the Claimant
Mr Simon Thorley QC and Mr Roger Wyand QC (instructed by Messrs Field Fisher Waterhouse) appeared for the Defendants
APPROVED JUDGMENT
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic
The Honourable Mr Justice Rimer
Introduction
The claimant is Koninklijke Philips Electronics NV ("Philips"), a Dutch company. Philips manufactures and supplies consumer products, including electric rotary shavers. It first introduced rotary shavers to the market in 1939, since when it has sold about 425 million electric shavers, of which about 290 million have been three-headed rotary shavers. Its three-headed shavers were first introduced in about 1966 and now account for about 85% of its overall sales of electric shavers.
Philips is the proprietor of trade mark No. 1533452 ("the 452 mark") which was registered at the Trade Marks Registry with effect from 20 April 1993 and was later entered in the register maintained under the Trade Marks Act 1994 in accordance with the provisions of Schedule 3. It is registered in Class 8, in respect of electric shavers. It is a two-dimensional picture of the top portion of a three-headed rotary electric shaver. The overall shape is that of an inverted equilateral triangle, with the three heads sitting within a raised faceplate of clover leaf design ("the clover leaf") superimposed on the triangle. The 452 mark is as shown below:
Since at least the 1970s, the other main manufacturer of electric rotary shavers has been Izumi. Its shavers have been sold under the brands Remington, Sears, Windmere, Ronson and Glaver, mainly in the American market.
There are two defendants to the action, Remington Consumer Products Limited ("Remington") and Rayovac Europe Limited ("Rayovac"). Remington carries on business distributing and selling electric shavers, including (since the 1990s) in the United Kingdom. By the action, commenced on 15 February 2000, Philips claims that Remington has infringed the 452 mark by selling three-headed electric rotary shavers with heads identical or confusingly similar to the 452 mark and by depicting such heads on the packaging in which the shavers are supplied. Philips complains in particular of the sale of Remington's Microflex R485, Microflex 850, FastTrack RS2623 and FastTrack RS2843 models. Remington admits the acts alleged but denies it has committed any trade mark infringement. It counterclaims that the 452 mark is invalid and that its registration should be revoked.
Philips is also the registered proprietor of three other marks. They are marks comprising three circles within an inverted equilateral triangle. One has not been used since the 1970s but the other two have been used on the packaging for Philips shavers and (so it is said) also on the LCD screens of certain models of shavers. Remington counterclaims that these marks are also invalid and should be revoked, alternatively it claims their revocation for non-use. The marks are the subject of more than one registration. The registrations are: (i) No.1080316 ("316") registered with effect from 22 April 1977; (ii) No.1087357 ("357") registered with effect from 29 November 1977, (iii) No.1124415 ("415") registered with effect from 22 November 1979 and (iv) No.1203652 ("652") registered with effect from 19 September 1983. The 415 and 652 registrations are each of a series of all three marks. The marks are as follows:
Taking them from the left, the first mark is the first in the 415 registration and the third in the 652 registration. I shall refer to it simply as "the 415(1)" mark. The second mark is the second in each of the 415 and 652 registrations, and is also separately the subject of the 357 registration. I shall refer to it as "the 357 mark". The third mark is the first in the 652 registration, the third in the 415 registration and is also separately the subject of the 316 registration. It features most in the story and I shall refer to it as "the 316 mark".
Rayovac was, by consent, added as a second defendant at the beginning of the trial. The explanation is that Remington has relatively recently been acquired by Rayovac Corporation and, as part of the subsequent rationalisation, its assets and liabilities were transferred to Rayovac. There is no need to refer further to Rayovac save to record that, on instructions, Mr Simon Thorley QC, who appears with Mr Roger Wyand QC for both defendants, acknowledged that Rayovac would assume any liability that may fall on Remington as a result of these proceedings.
Most of the evidence and argument before me was devoted to the dispute over the 452 mark. Several issues were ventilated, but the main area of dispute centred on the application or otherwise to the 452 mark of section 3(2)(b) of the Trade Marks Act 1994. Remington's case is that that provision imposes an absolute bar on the registration of the 452 mark as a trade mark and, if it is right about that, Philips accepts that the registration is invalid. That is because section 3(2)(b) presents a preliminary obstacle to registration and, unless it can be overcome, that is the end of the claim to registration. In particular, it cannot be overcome by evidence that Philips's use of the mark has resulted in its having acquired a distinctive character capable of indicating the origin of Philips shavers.
If, however, as Philips claims, Remington is wrong about the application of section 3(2)(b), then other issues arise upon which Philips must also satisfy the court if it is to be entitled to the relief it claims. First, it has to show that the 452 mark had acquired a distinctive character as a result of the use made of it before the date of the application for registration, which was 1993. Secondly, if it can do that, it has to prove infringement by Remington. Mr Henry Carr QC appeared with Mr Piers Acland for Philips and submitted that those latter aspects of the case raise questions which will or may require a reference to the European Court of Justice ("the ECJ"). Mr Thorley disputed that any questions arise which need such a reference.
I will deal first with the issue over the 452 mark and then with the issues arising in relation to the other marks.
A. The 452 mark
This Act repealed and replaced the Trade Marks Act 1938. It was enacted in order to implement European Community legislation in relation to trade marks, in particular Council Directive 89/104/EEC. I was referred to both the Directive and the Act, whose respective language is not identical. It is, however, the Act which is the primary source of the law that I have to apply and I will confine my principal citations of the legislation to those from the Act, although it is common ground that the Act must be construed to have the same effect as the Directive and that I must have regard to the Directive in interpreting the corresponding language of the Act. Neither counsel suggested that, despite the slight language differences, there is any material difference between the meaning and effect of the corresponding provisions of the Directive and of the Act.
The provision at the heart of the argument is section 3(2)(b) of the Act but to set it in context I will quote all of sections 1 to 3. They are in Part 1 of the Act, headed "Registered Trade Marks", and provide:
"Introductory
Trade Marks
-(1) In this Act a 'trade mark' means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
(2) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark (see section 49) or certification mark (see section 50).
Registered trade marks
-(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.
(2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.
Grounds for refusal of registration
Absolute grounds for refusal of registration-
-(1) The following shall not be registered-
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin , the time of production of goods or of rendering services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
(2) A sign shall not be registered as a trade mark if it consists exclusively of-
(a) the...
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