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Wednesday, 8 November 2006


The IPKat brings news of a deliciously complicated, but lesser known, chapter in the Philips v Remington saga, documented in the decision of Mr Hearing Officer Colombo of 13 September.
[NOTE TO READERS: the good bit about the unsuccessful House of Lords appeal comes near the end].

By now, every trade mark lawyer worth his salt (and even Ilanah’s mum) knows that, in 1995, Philips issued infringement proceedings against Remington with regard to Remington’s alleged infringement of Philips' registration of 2 dimensional shape of its three-headed razor. Fewer people know that in 1994, Philips applied to register a 3D mark for the shape of its three headed razor (though Ilanah's mum claims to know this too). The application was published in 1996, and Remington opposed it under ss.3(1)(a) and (b), 3(2) and 3(3).

Once Jacob J found the mark to be invalid, Remington argued that for Philips to continue to resist the opposition on the 3D mark was res judicata, and hence an abuse of process. The hearing officer disagreed, as he was not satisfied that the same cause of action was involved. A peeved Remington unsuccessfully appealed the hearing officer’s decision in the High Court. Remington appealed the (lack of) res judicata decision to the Court of Appeal. While this was happening, the Court of Appeal refused Remington’s appeal in the 2D infringement case, and made a reference to the ECJ, which subsequently issued its judgment.

In October 2003, Philips and Remington saw sense in the 3D opposition case, and agreed to stay the proceedings pending the final outcome of the 2D infringement case. Under the terms of the stay, if the mark was held to be valid in the 2D infringement case, Remington would drop the 3D opposition, and if the 2D mark was held to be invalid, Philips would stop defending the 3D opposition.

The news is the 2D infringement case has finally ended once and for all. In October 2004, Rimer J held that the 2D mark was invalid, in the light of the ECJ’s judgment. His decision was upheld in January 2006.

In June 2006, the House of Lords Appeal Committee Report informed the parties that Philips’ application for permission to appeal against Mr Justice Rimer’s decision was refused on the grounds that the petition did not raise an arguable point of law of general public importance. An appeal in relation to the point of European Community law raised in the application was also refused as the provision in question had already been interpreted by the European Court of Justice. In consequence, the 2D mark was recorded on the Register as being invalid, and under the conditions of the stay, Remington’s opposition in relation to the 3D mark was automatically successful and the 3D mark was refused registration.

Remington was awarded £935 costs for their troubles.

In other words, 2-nil to Remington.

The IPKat is put in mind of a number of angels indulging in a spot of light jiving on the head of a pin. The decision in the 2D infringement case to equate the 2D registration with the 3D embodiment not only determined the outcome of the infringement case, but also determined the outcome of this opposition.


Anonymous said...

Which all goes to show that there must be money in them thar three headed razors. Though I must say, I've always preferred a wet shave.

Just to say that Mr Hearing Officer Colombo is absolutely delighted that you've picked up on his decision. Some of us slave for years in the Registry without a hint of recognition from the IPKAT. Oh, the injustice !

Ilanah said...

The IPKat is always happy to have Registry decisions of note drawn to his attention. At present his method for detecting them is scrolling through the list of decisions and trying to form a judgment based on i. the names of the parties and ii. the descriptions of the mark. Not very scientific. Just to add to the randomness factor, he can't detect any pattern in when new decisions are added to the website.

Anonymous said...

Yes, the UKPO should consider redesigning its website to make it easier to find information ...

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