PHILIPS TAKES IT ON THE CHIN FROM REMINGTON IN SHAVER SCRAPE

The Butterworths All England Direct subscription-based case law service has just delivered news of Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and another [2004] EWHC 2327 (Ch) a Chancery Division division of Mr Justice Rimer yesterday.

Philips, a Dutch company, made and sold electric rotary shavers and owned UK trade mark 1533452 (the 452 mark)for electric shavers (Class 8). The mark was a two-dimensional picture of the top portion of a three headed rotary electric shaver. The overall picture was that of an inverted equilateral triangle, with the three heads sitting within a raised faceplate of clover leaf design. Philips also owned three other marks comprising three circles within an inverted equilateral triangle. Remington also made and sold electric shavers.

In February 2000, Philips sued Remington for trade mark infringement, alleging that Remington (i) sold three headed electric rotary shavers with heads identical or confusingly similar to the 452 mark and (ii) depicted those heads on the packaging in which the shavers were supplied. Remington denied infringing and counterclaimed that the 452 mark and the claimant’s three other marks were invalid since they were functional. Philips argued that the only parts of either the plain or the cloverleaf plate which performed a technical function were the three circular areas of faceplate immediately surrounding the three cutting heads and that the residual areas of the faceplate were non-functional, being parts of the design that were not attributable to the achievement of a technical result. The main issue for Rimer J to determine in these proceedings was whether the 452 mark consisted exclusively of the shape of goods which was necessary to obtain a technical result under the Trade Marks Act 1994 s.3(2)(b).

Rimer J dismissed Philips' infringement claim and ordered that all of Philips' marks be revoked. He held, in particular, that:

* Section 3(2)(b) presented a bar to registration which, unless it could be overcome, was fatal.

* The preferred view of s.3(2)(b) was that, provided each feature of a shape as a whole performed a technical function, it didn't matter that some minute elements of it might not themselves contribute to that performance. In this case the clover leaf was a feature which served the essential technical functions of (i) stretching the skin and (ii)raising the hair, to obtain an effective and painless shave and it was not accepted that there were any parts of the clover leaf that did not contribute to the technical result. Thus the whole of the faceplate, including the clover leaf, contributed to the overall technical objective of giving the user a smooth, effective and comfortable shave and consequently, the whole of it was attributable to obtaining that technical result.

* In those circumstances, since s.3(2)(b) was a barrier to registration of the 452 mark. It followed that its registration was invalid. Furthermore, since the other three marks were minimalist representations of shapes whose essential features were solely attributable to obtaining the technical result, they too were excluded from registration by s.3(2)(b).

The IPKat has not yet read the full transcript, but wonders how much, if anything, this decision adds to the extensive jurisprudence generated by this issue, including the reference to the European Court of Justice in Case 299/99 Philips v Remington.

There heads are better than one here, here, here and here