Germany: Philips vs. Remington: The Modern Face of Trademarks II

The concept of trademark protection for the shape of products or their packaging by way of a registration is a concept essentially novel to most European jurisdictions. In particular, trademarks consisting of the shape of the goods themselves raise a multitude of questions which have, to date, remained largely unanswered. The great volume of such trademark applications pending before the national trademark offices and the OHIM in Alicante as Community trademark applications show that guidance as to the protectability of such marks and their scope of protection is needed. This article deals specifically with a recent decision by the European Court of Justice ("ECJ") concerned with trademark protection in respect of technical pre-determined configurations. Reference is made in that respect to an earlier Article which appeared in this publication in February 1998 ("Philips vs. Remigton: The modern face of trademarks a close shave for rotary shaver manufacturers"(name author?).

With its decision of June 18, 2002 the ECJ has shed light on the issue as to what criteria apply for assessing the exclusion from registrations of "signs which consist exclusively of a shape of goods which is necessary to obtain a technical result" as set out in the second indent of Art. 3 (1) (e) of the First Council Directive (89/104 EEC) of 21 December 1988 to approximate the laws of the Member States relating to trademarks ("the Directive"). In answering various questions referred to it by the Court of Appeal (England and Wales) (Civil Division), the ECJ has provided clarification as to the interpretation of Art. 3 (1) and (3), 5 (1) and 6 (1) (b) of the Directive.

These issue arose in a dispute between Koninklijke Philips Electronics N.V. ("Philips") and Remington Consumer Products Ltd. ("Remington") relating to a court action for infringement of a trademark which Philips had registered in the UK. The latter trademark consists of a graphic representation of the shape and configuration of the head of a three-headed rotary electric shaver developed by Philips in the sixties, which comprises three circular heads with rotating blades in the shape of an equilateral triangle. In 1995, Remington commenced to produce and sell in the UK its electric shaver model DT 55, also comprising the rotating heads forming an equilateral triangle, shaped similarly to that of Philips. Philips subsequently sued Remington for infringement of its trademark. Remington filed a counter-claim for revocation of the trademark registered by Philips. The decision of the High Court of Justice of England and Wales, Chancery Division (Patents Court) (United Kingdom) ("the High Court"), granted the counter-claim and ordered revocation of the trademark registration of Philips on the ground that the sign was incapable of distinguishing the goods concerned from those of other undertakings and was devoid of any distinctive character. Furthermore, the High Court took the position that the trademark consisted exclusively of a sign which served in trade to designate the intended purpose of the goods and of a shape which was necessary to obtain a technical result and which gave substantial value to the goods. Philips subsequently filed appeal to the Court of Appeal (England and Wales) (Civil Division) ("the Court of Appeal"). In the following, the Court of Appeal stayed the proceedings and referred to the ECJ in total seven questions. The ECJ provided answers to the first four questions:

1. Is there a category of marks which is not excluded from registration by Article 3(1)(b), (c) and (d) and Article 3(3) of council Directive 89/104/EEC which is none the less excluded from registration by Article 3(1)(a) of the Directive (as being incapable of distinguishing the goods of the proprietor from those [of] other undertakings)?

2. Is the shape (or part of the shape) of an article (being the article in respect of which the sign is registered) only capable of distinguishing for the purposes of Article 2 if it contains some capricious addition (being an embellishment which has no functional purpose) to the shape of the article?

3. Where a trader has been the only supplier of particular goods to the market, is extensive use of a sign, which consists of the shape (or part of the shape) of those goods and which does not include any capricious addition, sufficient to give the sign a distinctive character for the purposes of Article 3(3) in circumstances where as a result of that use a substantial proportion of the relevant trade and public

a) associate the shape with that trader and no other undertaking;

b) believe that goods of that shape come from that trader absent a statement to the contrary?

4. (a) Can the restriction imposed by the words if it consists exclusively of the shape of goods which is necessary to achieve a technical result appearing in Article 3(1)(e)(ii) be overcome by establishing that there are other shapes which can obtain the same technical result or

(b) is the shape unregistrable by virtue thereof if it is shown that the essential features of the shape are attributable only to the technical result or

(c) is some other and, if so, what test appropriate for determining whether the restriction applies?<

Since the Court of Appeal made it clear that consideration of the questions relating to the infringement would not be required if its interpretation of Article 3 would be upheld by the ECJ, no reply was given to the fifth, sixth and seventh questions in view of the fact that the answer to the fourth question confirmed that interpretation. The surprisingly clear answers to the questions one to four and the underlying considerations warrant an analysis. While the ECJ essentially reiterates its opinion already set out in previous judgements, namely the "Windsurfing Chiemsee"¹⁾ and "Canon"²⁾ decision, new ground is covered in particular in relation to the interpretation of the second indent of Article 3(1)(e) of the Directive. That provision is relevant especially in relation to trademark protection of technical configurations:

In responding to the first question, the ECJ very clearly stated that there is no category of marks which is not excluded from registration by Article 3(1)(b),(c) and (d) and Article 3(3) of the Directive which is none the less excluded from registration by Article 3(1)(a) thereof on the ground that such marks are incapable of distinguishing the goods from the proprietor of the mark from those of other undertakings.

In its reasoning, the ECJ highlights the essential function of a trademark, namely to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or services from others which have another origin and to offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality. In effect, as the ECJ has asserted previously in the "Canon" decision, the essential function of a trademark is two-fold: identity of origin and quality guarantee. The ECJ then reiterates its observations previously made in the "Windsurfing Chiemsee" decision stating that just as distinctive character is one of the general conditions for registering a trademark according to Article 3(1)(b), distinctive character acquired through use means that the trademark must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.

With reference to the wording of Article 3(1)(a) and the structure of the Directive, the ECJ then comes to the only logical conclusion that a sign which is incapable of distinguishing cannot have a distinctive character.

By its second question, the referring court seeks to ascertain whether the definition of a trademark as set out in Article 2 of the Directive means, as regards the requirement of capability to distinguish, that they must contain some arbitrary element, such as an embellishment with no functional purpose.

Here again, the ECJ comes to a clear conclusion in finding that the shape of the product in respect of which the sign is registered does not require any capricious addition which has no functional purpose. Apart from again highlighting the primary function of a trademark as set forth in Article 2 of the Directive, the ECJ states that there is no distinction between different categories of trademarks and that the criteria for assessing the distinctive character of the three-dimensional trademarks are therefore no different from those to be applied to other categories of trademarks. In that context, it is emphasized that the Directive does not require that the shape of the product in respect of which the sign is registered must include capricious additions. The shape in question must simply be capable of distinguishing the product of the proprietor of the trademark from those of other undertakings.

With respect to the third question, the ECJ states that if a shape is refused registration pursuant to Article 3 (1)(e) of the Directive, it can under no circumstances be registered by virtue of Article 3(3). With equal clarity, the ECJ holds that a trademark which is refused registration under Article 3(1)(b)(c) or (d) may acquire a distinctive character which it did not have initially and may thus be registered according to Article 3(3) of the Directive.

According to the ECJ, the distinctive character of a mark must be assessed in relation to the goods or services in respect of which registration is applied for. Reference is subsequently made to the judgment "Windsurfing Chiemsee", where the following was inter alia taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

In the "Windsurfing Chiemsee"- decision the ECJ also held that if, on the basis of the afore-mentioned criteria, the competent authority finds that the relevant class of persons, or at least a significant portion thereof, identify goods as originating from a particular undertaking, it must decide that the requirement for registering the mark as set out in Article 3(3) of the Directive is fulfilled. The data to be submitted cannot be of a general nature such as predetermined percentages, but has to be specific and directly relevant to the case.

A further prerequisite identified by the ECJ is that the distinctive character of a sign consisting in the shape of a product must be assessed in the light of 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, a prerequisite ascertained in the "Gut Springenheide" ³⁾decision.

The forth question put forward by the referring court to the ECJ touched upon the core of the issue contentious between the parties. The objective of the question is to find an answer whether Article 3(1)(e), second indent, of the Directive must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue of that provision if it is established that the essential functional features of the shape are attributably only to the technical result. Furthermore, clarification is sought as to the question whether the ground for refusal or invalidity can be overcome by establishing that there are other shapes which obtain the same technical result.

In answering these questions, the ECJ first of all points out that the grounds for refusal to register signs consisting of the shape of a product as set out in Article 3(1)(e) of the Directive are exhaustive, as could be seen from the seventh recital in the preamble to the Directive. While marks which were refused registration on the grounds set out in Article 3(1)(b), (c) or (d) of the Directive may be registered on the basis that they have acquired a distinctive character through use under Article 3(3), a sign which is refused registration under Article 3(1)(e) of the Directive can never acquire a distinctive character. From this the ECJ follows that Article 3 (1)(e) concerns signs which are not susceptible to trademark protection. Having established this, the ECJ states that the grounds for refusal laid out in Article 3 of the Directive must be seen in the light of the public interest underlying each of them. The rationale of Article 3(1)(e) of the Directive is to prevent the granting of a monopoly on technical solutions or functional characteristics of a product to the proprietor. The protection given by the trademark right should not be extended so far as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition which the proprietor of the trademark. The provision of Art. 3(1)(e), second indent, of the Directive had the purpose to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trademark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in respect of the technical solution they desire to adopt in order to incorporate such a function in their product. The ECJ concludes that a shape whose essential characteristics perform a technical function and which were chosen to fulfill that function should be used freely by all competitors, an aim which is in the public interest. This position reflects the legitimate aim of not allowing individuals to use the registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions. Therefore, even if that technical result can be achieved by other shapes, registration of a sign consisting of that shape is precluded, where the essential functional characteristics of the shape of a product are attributable solely to the technical result. Article 3(1)(e), second indent, of the Directive does not contain language allowing a different interpretation.