When the European Union passed the Trade Marks Directive in 1989, one of the principal purposes of the new directive was to harmonise the laws of the member states of the European Union. It also created a change in what the law would allow to be a registered trade mark. Gone was the straight jacket of the old law, and in came a more liberal regime that recognised that consumers and end-users could recognise more than just words as being associated with one particular trader. How far does the law actually go in allowing other kinds of trade marks? A recent case before the European Court of Justice has provided an insight into what the revised regime will allow.

In Philips Electronics N.V. –v- Remington Consumer Products Limited Philips commenced legal proceedings in the UK against Remington Shavers for producing and then selling their version of a triple headed shaver. Philips had a trade mark registration that protected the shape of its triple headed shaver (shown below) and for some years had been the only manufacturer to sell such a shaver on the UK market. This was until Remington came along. Philips sued Remington for infringement of their registered trade mark and Remington replied by claiming that the Philips trade mark was invalid.

At first instance Remington was successful and the Court ordered the trade mark be revoked however, Philips appealed to the UK Court of Appeal. When the Judges in the Court of Appeal heard the case, they felt that there were a number of areas in the directive that were unclear and that required the guidance of the European Court of Justice (ECJ). They therefore referred a number of questions to the ECJ to clear these issues up and to provide guidance.

Trade Marks are extremely powerful monopolies. They give the proprietor of the registered trade mark the legal right to prevent other traders from using the same or similar trade marks in certain circumstances. They can, if properly looked after, last indefinitely. This is one of the reasons that the law regulates what can and cannot be a registered trade mark. Even if you obtain a registered trade mark, its validity can be challenged when you try and enforce it. This is exactly what Remington did when they were sued for trade mark infringement. They claimed, for a number of reasons, that the Philips three headed shaver trade mark was invalid.

It was in relation to the attack on the validity of the Philips trade mark that the Court of Appeal referred a number of questions to the ECJ, some of which are of interest to brand owners when they look at the question of whether trade mark protection should be considered.

One of the questions that was considered by the ECJ was the question of whether trade marks for shapes are permitted in some circumstances. Under the Trade Marks Directive (and the UK’s enactment of the directive, the Trade Marks Act 1994) there is a prohibition on obtaining trade marks that consist “exclusively” of, shapes which result from the nature of the goods themselves, shapes which are necessary to achieve a technical result, or shapes that give substantial value to the goods. In this case, it was the second of the two grounds that was of interest.

What the UK Court of Appeal wanted to know was whether this prohibition on certain shapes can be overcome by showing that there was another shape that could achieve the same technical result, or will the shape be unregisterable if it is shown that the essential features of the trade mark are due to its technical function? This is because Philips had argued in defending its trade mark that if there are a number of ways of getting to the same result, then the trade mark can not be necessary to achieve the technical result.

The ECJ answered the question by studying the policy reasons for the exclusion on such registrations. The reason why such trade marks are prohibited is because the framers of the registration wanted to prevent one trader from gaining a monopoly on the way of achieving a technical result. So, by way of example, if one trader had a 3-D trade mark for a u-shaped tube for a sink outflow, then nobody else would be able to produce any similar u-shaped tubes for sinks without infringing this particular hypothetical trade mark, even thought there may not be any other way to control the outflow of water from a sink.

In answering the question, the ECJ took a very strict view of the prohibition. They said that if a potential trade mark consisted of a sign whose essential features were there because of the result that it had to achieve, then they should be refused registration. Nor did it matter that there may be others ways to achieve the same result.

In a related question, the Court of Appeal also asked whether some shape marks could achieve registration where it could be shown that one particular trader has become associated in the minds of the public with a sign that was composed of the shape of the goods. Under certain circumstances a trade mark that would normally be refused can be granted registration if it can be shown that because of the use made of that mark, it has in fact become distinctive. In this particular case, the ECJ stated that it was possible that some trade marks that consisted of shapes could become distinctive if it could be shown that a substantial number of people associated the shape with one particular source or trader.

What the ECJ has confirmed in this case is that where a 3-D or shape trade mark becomes associated with one particular trader, then it is possible that it will be judged to have sufficiently distinctive character to be considered for trade mark registration. However, the prohibition on certain shapes will prevent registration where the shape consists exclusively of a shape that is required to achieve a technical result. As the ECJ’s views are only intended to provide guidance, the matter will be remitted back to the UK Court of Appeal in order that they can apply the answers to this and the other questions that it posed to the facts of the particular case.

  • The Trade Marks Directive in generally more permissive in what it permits to be registered as a trade mark.
  • A shape trade mark that has acquired, through use, recognition in the minds of the public, may be distinctive enough to gain registration.
  • Where a shape trade mark consists exclusively of features that are required to achieve a particular technical result, these may be refused registration.

A version of this article was first published in the August 2002 issue of Brand Strategy.