The court also said that a business can only register a trade
mark that has distinctive character by its nature or through the
use made of the mark is capable of distinguishing its products from
those of other businesses.
As a result of today’s ruling, Philips could lose its case in an
English court over its trade mark for the shape of an electric
shaver.
In 1966 Philips developed an electric shaver with three rotating
heads in the shape of an equilateral triangle. In 1985 it
registered a trade mark consisting of the graphical representation
of the shape and configuration of the head of the shaver under
English law. In 1995, rival company Remington began to manufacture
and market in the UK a shaver in a similar shape to that used by
Philips.
Philips sued Remington for infringement of its trade mark.
Remington counter-sued for revocation of the trade mark registered
by Philips on the ground that the “sign” on which the trade mark
was based had no distinctive character.
England’s questions, Europe’s answers
The English Court of Appeal referred questions to the Court of
Justice on the interpretation of the Trade Marks Directive. That
Directive lists, among other things, the grounds for refusal or
invalidity of registrations of trade marks. The English court asked
the Court of Justice to interpret the directive on three
points.
Firstly, the English court asked:
Is there a category of trade marks registrations that can be
refused on the ground that they are not capable of distinguishing
their products from those of other undertakings even if they have
acquired distinctive character though the use made of them?
The Court today pointed out that the directive lays down two
preconditions for a sign to constitute a trade mark: it must be
capable both of graphic representation and of distinguishing the
products of one undertaking from those of other undertakings.
The Directive allows registration to be refused for trade marks
which are devoid of any distinctive character, descriptive marks,
and marks which consist exclusively of indications which have
become customary in the current language or in the bona fide and
established practices of the trade.
However, that rule is qualified in that a sign may, through use,
acquire a distinctive character which it initially lacked. It is
therefore through the use made of it that the sign acquires the
distinctive character which is a prerequisite for its
registration.
However, the directive also prohibits the registration of signs
which cannot constitute a trade mark. The Court points out that the
directive seeks, by means of that prohibition, to exclude from
registration signs which do not fulfil the second precondition for
the registration of a trade mark.
Accordingly, only marks having a distinctive character by their
nature or by the use made of them are capable of distinguishing
their goods from the goods of other undertakings and are thereby
capable of registration.
Secondly, the English court asked:
Is the fact that the relevant class of persons associates the
shape of a product with a specific manufacturer, believing that all
products with that shape come from that manufacturer, sufficient to
give that sign distinctive character which would enable it to be
registered as a trade mark?
The Court observed that if at least a significant proportion of
consumers or of the relevant class of persons identify goods as
originating from a particular undertaking because of the trade
mark, it must rule that the requirement for registering the mark is
satisfied.
However, in line with its case-law, the Court specified that
such circumstances cannot be shown to exist solely by reference to
general, abstract data, but must be assessed in the light of the
presumed expectations of an average consumer of the category of
goods in question.
Moreover, their identification of the product as originating
from a given undertaking must be as a result of the use of the mark
as a trade mark.
Thirdly, the English court asked:
Is it possible to refuse to register a sign if it is
established that the essential functional features of the shape of
the product are attributable only to a technical result, or
conversely, is it possible to accept that registration where there
are other shapes which can obtain the same technical result?
The Court pointed out that the directive lists the grounds for
refusal of signs consisting of the shape of a product exhaustively.
The purpose of those grounds for refusal is to prevent the trade
mark right from granting its proprietor a monopoly on technical
solutions likely to be used by competitors.
Thus, 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.
The Community provision thus pursues an aim which is in the
public interest, as it requires that such a shape may be freely
used by all.
As to whether the existence of other shapes which could achieve
the same technical result can lead to the acceptance of
registration of a sign, the Court ruled that there is nothing in
the wording of the provisions of the Directive to allow such a
conclusion.
Since these were questions referred for a preliminary ruling, it
will be for the English court to apply to the case before it the
interpretation of Community legislation made by the Court of
Justice.
