Language of document :

Notice for the OJ



     18 June 2002

in Case C-299/99 (Reference for a preliminary ruling from the Court of Appeal (England & Wales) (Civil Division): Koninklijke Philips Electronics NV v Remington Consumer Products Ltd,(1)

    (Approximation of laws ( Trade marks ( Directive 89/104/EEC ( Articles 3(1) and (3), 5(1) and 6(1)(b) ( Signs capable of being trade marks ( Signs consisting exclusively of the shape of the product)

    (Language of the case: English)

    (Provisional translation; the definitive translation will be published in the European Court Reports)

In Case C-299/99: Reference to the Court under Article 234 EC by the Court of Appeal (England and Wales) (Civil Division) (United Kingdom) for a preliminary ruling in the proceedings pending before that court between Koninklijke Philips Electronics NV and Remington Consumer Products Ltd, on the interpretation of Articles 3(1) and (3), 5(1) and 6(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the Court, composed of: G.C. Rodríguez Iglesias, President, P. Jann, F. Macken (Rapporteur), N. Colneric and S. von Bahr (Presidents of Chambers), C. Gulmann, D.A.O. Edward, A. La Pergola, J.-P. Puissochet, J.N. Cunha Rodrigues and C.W.A. Timmermans, Judges; D. Ruiz-Jarabo Colomer, Advocate General; D. Louterman-Hubeau, Head of Division, for the Registrar, has given a judgment on 18 June 2002, in which it has ruled:

1.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 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 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 of the proprietor of the mark from those of other undertakings.

2.In order to be capable of distinguishing an article for the purposes of Article 2 of the Directive, the shape of the article in respect of which the sign is registered does not require any capricious addition, such as an embellishment which has no functional purpose.

3.Where a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods may be sufficient to give the sign a distinctive character for the purposes of Article 3(3) of Directive 89/104 in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates that shape with that trader and no other undertaking or believes that goods of that shape come from that trader. However, it is for the national court to verify that the circumstances in which the requirement under that provision is satisfied are shown to exist on the basis of specific and reliable data, that 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, are taken into account and that the identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result of the use of the mark as a trade mark.

4.Article 3(1)(e), second indent, of Directive 89/104 must be interpreted to mean that a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or invalidity of registration imposed by that provision cannot be overcome by establishing that there are other shapes which allow the same technical result to be obtained.


1 - OJ C 299 of 16.10.1999