Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Lord Justice Mummery |
| Judgment Date | 26 January 2006 |
| Neutral Citation | [2006] EWCA Civ 16 |
| Docket Number | Case No: A3/2004/2448 |
| Court | Court of Appeal (Civil Division) |
| Date | 26 January 2006 |
[2006] EWCA Civ 16
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
MR JUSTICE RIMER
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Mummery
Lord Justice Neuberger and
Lord Justice Lloyd
Case No: A3/2004/2448
MR HENRY CARR QC & MR PIERS ACLAND (instructed by Messrs Wilmer Cutler Pickering Hale and Dorr LLP) for the Appellant
MR SIMON THORLEY QC & MR ROGER WYAND QC (instructed by Messrs Field Fisher Waterhouse) for the Respondent
This is the judgment of the court, to which all of its members have contributed.
The litigation
This marathon litigation is about trade marks for electric shavers. The contestants are well-known major manufacturers of three-headed rotary electric shavers for the international market: Koninklijke Philips Electronics N.V. (Philips) , a Dutch company for whom Mr Henry Carr QC appears, and Remington Consumer Products Limited (Remington) , for whom Mr Simon Thorley QC and Mr Roger Wyand QC appear.
In October 2004 Remington won the latest leg of the UK marathon before Rimer J, who decided that the trade marks registered and relied on by Philips in this case were invalid.
In this appeal by Philips the main question is whether a Philips trade mark consisting of "the shape of goods" (the 452 Mark, as described and pictured below) is valid.
Remington's challenge to validity invokes the functionality principle. The principle ensures that shape marks, like other trade marks, are indicators of the origin or source of the goods in question. They do not enlarge the scope of trade mark protection to cover technical solutions for the goods themselves. Other forms of intellectual property, such as patents, designs and copyright, are available for the protection of particular rights of defined scope and limited duration in specified aspects of the goods themselves. If trade marks were allowed to confer rights in technical solutions for the goods themselves, legitimate competition in the relevant market for the goods would be impaired. A shape mark registered in breach of the functionality principle would enable its proprietor to protect his products from the competition of other traders' goods in a shape, which was necessary to obtain a similar technical result. Competition considerations prevail in the legislation, which implements the functionality principle. There are excluded from registration, prior to any consideration of the conventional trade mark questions of the inherent or acquired distinctiveness of a mark, signs consisting exclusively of the shape of goods, which is necessary to obtain a technical result.
There is no shortage of judicial opinion, either in the UK or elsewhere in the European Union, on the validity of shape marks for this type of electric shaver. The litigation between Philips and Remington is multi-national and at several levels of the judicial hierarchy. The most relevant judgments were those delivered in Philips Electronics NV v. Remington Consumer Products Limited by Jacob J in [1998] RPC 283, by the Court of Appeal in [1999] RPC 809 and by the European Court of Justice in [2003] RPC 2. Those judgments all related to the registration by Philips of another shape mark for electric shavers (the 208 Mark, as described and pictured below) and the alleged infringement of that mark by Remington's DT 55 Wet and Dry Shaver. The Remington product was a three-headed rotary model. The three heads at the top end of the shaver were arranged within an equilateral triangle in a similar fashion to the 208 Mark. The outcome of those proceedings was that the 208 Mark was held to be invalid. It was absolutely barred from registration as a trade mark on the ground that it consisted exclusively of features of the shape of the goods, which were necessary to obtain a technical result.
The validity of the registrations of both the 452 Mark and the 208 Mark is governed by the provisions of the Trade Marks Act 1994 (the 1994 Act) . The applicable provisions of the 1994 Act are derived from, and they must be interpreted, as far as possible, to be compatible with, the First Council Directive 89/104/EEC (the Directive) and with the rulings of the Court of Justice on the meaning of the Directive. The ability to register the shape of goods as a trade mark was introduced into English law by the combined effect of the Directive and the 1994 Act. Under the previous legislation the shape of goods could not be registered as a trade mark. Once shape marks became registrable in principle it was necessary to impose restrictions on their eligibility for registration in order to prevent the competition consequences mentioned in paragraph 5 above.
Litigation in other countries of the European Union between Philips and Remington about various trade marks equivalent to the 452 Mark has so far yielded a clutch of helpful judgments on this point from national courts: in Sweden (Swedish Court of Appeal 28 January 2004) , France (Paris Court of Appeals 16 February 2005) , Germany (German Federal Patent Court April 2004 and compare German Federal Court 21 April 2005 relating to a "device mark" of the kind described later in this judgment) , Spain (Court of First Instance, Barcelona 6 May 2004) and Italy (The Court of Milan 26 February 2004) . The foreign judgments speak with one voice, though in different languages: that Philips' shape marks for their three-headed rotary electric shaver are invalid by reason of their functionality.
This appeal
Philips appeal (with permission granted by Waller and Neuberger LJJ on a renewed application on 21 February 2005) from the decision of Rimer J on 21 October 2004.
Infringement proceedings were brought against Remington by Philips in respect of the sale of a variety of Remington models of three-headed electric rotary shavers with heads alleged to be identical or confusingly similar to the 452 Mark. Remington challenged the validity of the Philips trade marks by way of counterclaim. Rimer J made a declaration on the counterclaim that the registration of the 452 Mark by Philips is and always has been invalid.
The precise legal question for this court on the principal issue is whether Rimer J was wrong in deciding that the 452 Mark (TM No 1,533,452) , which was registered by Philips under the Trade Marks Act 1938 with effect from 20 April 1993 in respect of electric shavers (class 8) and later re-entered in the register maintained under the 1994 Act (schedule 3) , was invalid by reason of section 3(2) (b) of the 1994 Act. The subsection imposes a preliminary bar on the registration of functional shapes as trade marks for goods. Only if that preliminary obstacle is overcome is it necessary to consider the more familiar trade mark issues of the inherent or acquired distinctiveness of the mark.
Although Rimer J made findings of fact relevant to the distinctiveness of the 452 Mark, it was unnecessary for him to decide whether that mark was also invalid under sections 3(1) (b) or (c) of the 1994 Act. According to Philips a reference to the Court of Justice may be necessary before the objections to validity under those provisions could be determined against Philips by an English Court, certainly in the case of the device marks mentioned in paragraph 14 below. Mr Carr QC criticised the lack of clarity in the judgment of the Court of Justice on the questions referred by the Court of Appeal in the litigation over the 452 Mark. He submitted that the rulings required clarification in two respects: first, as to how the court should identify the "essential feature" of the mark and, secondly, as to the effect of the requirement laid down by the court that the essential feature is "only" or "solely" functional.
As he had held that the 452 Mark is invalid, it was also unnecessary for Rimer J to decide whether Remington had infringed it.
In addition to the 452 Mark the declaration of invalidity on the ground that the essential features of the mark are functional covers the Philips trade marks described in the proceedings as "the device marks." Examples of them are pictured below. They were registered before the 1994 Act by Philips in class 8, either individually or as part of a series of marks under TM Nos 1 080 316 (the 316 Mark) , 1 087 357, 1 124 415 and 1 203 652 (the Device Marks) . They comprise two dimensional drawings depicting three circles arranged within an inverted equilateral triangle. The Device Marks, principally the 316 Mark, have been used in various ways: for example, on the packaging for Philips' shavers and in advertising materials. Rimer J described the Device Marks as all consisting of "schematic representations of the head of a rotary shaver with three cutting heads" (paragraph 198) . They are all registered as mark type "Device only." That expression indicates that the mark is purely a drawing and that no word is attached to the mark. The first two are coupled with a disclaimer that the registration of the mark shall give no right to the exclusive use of a device of an electric shaving head. Although the use of a trade mark includes use otherwise than by means of a graphic representation (section 103(2) of the 1994 Act) , Philips do not allege that the 316 Mark or any of the other Device Marks have been infringed by Remington's shavers or packaging. Indeed, Mr Carr asserted that the Device Marks cannot be infringed by use in the form of the three dimensional head of the Remington...
To continue reading
Request your trial
-
Nation Fittings (M) Sdn Bhd v Oystertec Plc and Another Suit
... ... of the public — of the average consumer is what matters. Mr Daniel Alexander Q.C., for ... the English High Court decision of Koninklijke Philips NV v Remington Consumer Products Ltd ... Court of Appeal decision of Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC ... ...
-
Societe des Produits Nestle SA v Cadbury UK Ltd
...NV v Remington Consumer Products Ltd [1999] RPC 809 at 820 and Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2006] EWCA Civ 16, [2006] FSR 30 at 27 The hearing officer identified the essential features of the shape which constitutes the Trade Mark at [66] as follo......
- Vibe Technologies Ltd's Application No 2390030
-
Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another
...the following passage from Mummery LJ’s judgment in the English Court of Appeal case of Koninklijke Philips Electronics NV v Remington [2006] FSR 30 (“Philips 1 (CA)”) (at [52]): As in other areas of trade mark law the important factor is the impact of the mark on the eye of the average cus......