|
Chris McLeod |
The ECJ's judgment in Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Limited (18 June 2002 (unreported)) is unlikely to hearten owners of shape or device mark registrations which are arguably invalid on the same basis as this decision. Although each case will inevitably turn on its own facts, it will be a brave trade mark owner who commences trade mark infringement proceedings based on a shape mark, particularly if it has been registered on the basis of distinctiveness acquired through use.
Conversely, alleged infringers of such marks are sure to consider the success of possible invalidity counterclaims more optimistically in the light of this decision.
On referral from the Court of Appeal, the ECJ reached the following decision with regard to registration of a shape as a trade mark. In a nutshell, only marks with distinctive character by their nature or through the use made of them are capable of distinguishing their products from those of other undertakings and thereby capable of registration. However, registration of a sign can be refused if it is established that the essential characteristics of the shape of the product are attributable solely to a technical result and it is irrelevant how many other shapes can achieve the same technical result.
Background to the case
|
In 1966 Philips launched a new electric shaver which had three rotating heads in the shape of an equilateral triangle. Philips registered this as a trade mark in the UK in 1985 on the basis of distinctiveness acquired through use. The registration consisted of a graphic representation of the shape and configuration of the head of the shaver (left).
In 1995 Remington released a similar shaver in the UK market. The precise appearance of the Remington shaver is not known, but it is likely to be similar to the subject of a UK design registration owned by the US Remington company, shown on the right.
Philips brought a claim against Remington for registered trade mark infringement. Remington counter-claimed to the effect that Philips' mark lacked distinctive character and should therefore be declared invalid.
The Advocate-General's Opinion
In his Opinion in January 2001, Advocate-General Ruiz-Jarabo Colomer dismissed all but one of the questions referred as entirely irrelevant. He concerned himself only with determining the scope of the exclusion from trade mark registration of "signs which consist exclusively of the shape of goods which is necessary to obtain a technical result" provided for by the second indent of Article 3(1)(e) of the Trade Marks Directive (89/104/EEC). Specifically he addressed whether a purely functional shape is caught by the exclusion, even when it can be shown that the same technical result can be achieved by other different shapes. To Philips' chagrin, he said that it was.
The judgment
The ECJ has now agreed with the Advocate-General's interpretation of Article 3(1)(e) and, whether relevant or not, dealt with several of the other questions referred without commenting on their significance. Four questions were addressed in all.
First the Court of Appeal sought clarification of whether there was a specific category of marks that are not otherwise excluded from registration which nonetheless are excluded on the basis that they are incapable of distinguishing the goods of the proprietor from those of other undertakings as provided in Article 2 of the Directive. The ECJ held that there was no such category. Its decision was based on consideration of the purpose of trade mark protection, i.e. to guarantee the origin of the trade mark and enable the consumer to distinguish the product of one undertaking from those of other undertakings. Its reasoning was that Article 3(1)(a) was clearly designed to exclude from registration signs which are not generally capable of being a trade mark and thus cannot be represented graphically and/or are not capable of distinguishing the goods or services of one undertaking from those of other undertakings. According to the ECJ it followed that there is no class of marks having a distinctive character by their nature or by the use made of them which is not capable of distinguishing goods or services within the meaning of Article 2.
Shape of the product
The second question concerned the actual shape of the product. Is the particular shape of the product (being the shape for which registration is sought) only capable of distinguishing for the purposes of Article 2 if it contains some capricious addition, without functional purpose, to the shape of the article? The court said no. What in fact Article 2 required was that the mark went to the purpose of trade mark protection. There was therefore no requirement for any capricious addition for a shape to be capable of distinguishing an article for the purposes of Article 2.
Distinctiveness through use
Question three went to the actual use of the product. Where the trader was the only supplier of the product on the market, did the fact that the supplier had made extensive use of the sign, which consisted of a shape, mean that the sign had acquired a distinctive character for the purposes of Article 3(3) where, as a result of that use, a substantial proportion of the relevant class of persons came to associate that shape with that supplier and no other or to believe that goods of that shape came from no other trader? The ECJ said maybe. Essentially, it is for the national court to verify that the circumstances in which the requirement under that provision is satisfied are shown to the exist on the basis of specific and reliable data, that the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect, are taken into account and that the identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result of the use of the mark as a trade mark.
Technical result
The fourth question, the one on which the Advocate-General had focused, asked whether the shape of a product was not capable of registration because the essential functional features of the shape were attributable only to the technical result and, if unregistrable, whether the fact that the same technical result could be achieved by another shape overcame this hurdle. The ECJ held that a shape would not be registrable in these circumstances and would not be made registrable by establishing that there were some other shapes which achieved the same technical result. The ECJ's reasoning was that the Directive is intended to preclude the registration of shapes whose essential characteristics perform a technical function, and thus, not to prevent competitors from supplying a product incorporating such a function or at least choosing a technical solution incorporating such a function.
Look towards design protection
Perhaps wishing to spare the Court of Appeal's blushes, the ECJ judgment is less dismissive of the questions referred. Nonetheless, the ECJ has arrived at essentially the same conclusion as Advocate-General Colomer and most significantly has endorsed the Advocate-General's interpretation of Article 3(1)(e). There is nothing in the Directive to suggest that the existence of other shapes which could achieve the same technical result can lead to the acceptance of registration of a sign otherwise unregistrable as being the shape of a product necessary to obtain a technical result. This effectively precludes from registration marks consisting of the shape of a product that do not contain any non-essential non-functional addition which, as the ECJ says itself, is not required for a mark to be capable of distinguishing goods under Article 2.
While it would not be sensible to advise against seeking trade mark registration following this decision, as the onus will always be on the other party to try to invalidate a registered trade mark used in inter partes proceedings, there must be doubt about the enforceability of marks similar to that of Philips.
As a consequence, companies would be well advised to look additionally to existing design registration protection and particularly to the EU design registration system which is due to come into being under the administration of OHIM early in 2003.
© Chris McLeod 2002. The author is an associate with McDermott, Will & Emery in London
