In 1966 Philips developed a new type of 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, Remington, a competitor, began to manufacture and market in the United Kingdom a shaver in a similar shape to that used by Philips.

These proceedings arose from the action brought by Philips against Remington for infringement of its trade mark. Remington counter-claimed 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. The Court of Appeal (England and Wales) referred questions to the Court of Justice on the interpretation of the Trade Marks Directive. That directive lists, inter alia, the grounds for refusal or invalidity of registrations of trade marks.

The national court has asked the Court of Justice to interpret the directive on three points in particular.

1. Is there a category of trade marks registration of which 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 points 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, inter alia, 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 istherefore 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 thereby capable of registration.

2.    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 observes 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 hold that the requirement for registering the mark is satisfied. However, in line with its case-law, the Court specifies 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.

3.    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 points 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 held that there is nothing in the wording of the provisions of the directive to allow such a conclusion.

N.B.    Since these are questions referred for a preliminary ruling, it is for the national court to apply to the case before it the interpretation of Community legislation made by the Court of Justice.

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