International litigation: focus on the United Kingdom.(trademarks)

Registering Shapes as Trademarks in Europe

The registration of shapes as trademarks was the central issue considered by the European Court of Justice (ECJ) in its long-awaited judgment in Philips Electronics NV v. Remington Consumer Products Limited. [ECJ Case C-299/99.] Philips has sold a three-headed rotary shaver in the United Kingdom since 1966, registering a UK trademark in 1985 for the graphical representation of the configuration and shape of the head of the shaver. In 1995, Remington began to manufacture and market a similar shaver in the United Kingdom, and was duly sued by Philips. Remington counterclaimed for revocation arguing that the sign forming the basis of the trademark had no distinctive character.

The English High Court upheld the counterclaim and revoked Philips' trademark as being incapable of distinguishing Philips' goods from other undertakings' goods and as being devoid of any distinctive character Philips appealed, and the Court of Appeal referred a number of questions on the EU Trademarks Directive [Directive 89/104/EEC.] to the ECJ for a preliminary ruling.

A key issue on which guidance was sought from the ECJ was the interpretation of Article 3(1)(e)(ii) of the Directive, which excludes from registration signs that consist exclusively of the shape of goods necessary to obtain a technical result. The ECJ was asked whether this restriction could be overcome by establishing that there are other shapes that can obtain the same technical result, or whether the shape was unregisterable if it was shown that the essential features of the shape were attributable only to the technical result.

The decision of the ECJ contained no great surprises. It held that:

 
   [A] sign consisting exclusively 
   of the shape of a product is 
   unregisterable ... if it is established 
   that the essential functional 
   features of that shape 
   are attributable only to the 
   technical result. 

That objection could not be overcome by showing that there are a variety of other shapes that achieve the same technical …