Koninklijke Philips Electronics NV V Remington Consumer Products ...

Summary Parties Grounds Decision on costs Operative part

Keywords

1. Approximation of laws - Trade marks - Directive 89/104 - Where registration of a trade mark may be refused or the trade mark declared invalid - Trade mark devoid of distinctive character - Relation between the provisions of Article 3(1)(b), (c) and (d) and 3(3), on the one hand, and Article 3(1)(a), on the other

(Council Directive 89/104, Art. 3(1)(a), (b), (c) and (d) and Art. 3(3))

2. Approximation of laws - Trade marks - Directive 89/104 - Signs capable of constituting a trade mark - Determination whether a trade mark has a distinctive character - Criteria - Capricious addition - Criterion not necessary

(Council Directive 89/104, Art. 2)

3. Approximation of laws - Trade marks - Directive 89/104 - Where registration of a trade mark may be refused or the trade mark declared invalid - Trade mark devoid of distinctive character - Distinctive character acquired by use - Meaning - Criteria

(Council Directive 89/104, Art. 3(3))

4. Approximation of laws - Trade marks - Directive 89/104 - Where registration of a trade mark may be refused or the trade mark declared invalid - Sign consisting of the shape of the product necessary to obtain a technical result - Meaning - Existence of other shapes which allow the same technical result to be obtained - Not relevant to the ground for refusal

(Council Directive 89/104, Art. 3(1)(e))

Summary

$$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 Directive 89/104 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.

( see para. 40, operative part, para. 1 )

2. In order to be capable of distinguishing an article for the purposes of Article 2 of Directive 89/104 to approximate the laws of the Member States relating to trade marks, 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. The criteria for assessing the distinctive character of three-dimensional trade marks are no different from those to be applied to other categories of trade mark and the shape in question must simply be capable of distinguishing the product of the proprietor of the trade mark from those of other undertakings and thus of fulfilling its essential purpose of guaranteeing the origin of the product.

( see paras 48 to 50, operative part, para. 2 )

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 to approximate the laws of the Member States relating to trade marks, 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.

( see para. 65, operative part, para. 3 )

4. Article 3(1)(e), second indent, of Directive 89/104 to approximate the laws of the Member States relating to trade marks 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.

( see para. 84, operative part, para. 4 )

Parties

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,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: D. Louterman-Hubeau, Head of Division,

after considering the written observations submitted on behalf of:

- Koninklijke Philips Electronics NV, by H. Carr QC and D. Anderson QC, and by Professor W.A. Hoyng, instructed initially by Eversheds Solicitors, and, subsequently, by Allen & Overy, Solicitors,

- Remington Consumer Products Ltd, by Lochners Technology Solicitors, Solicitors,

- the United Kingdom Government, by R. Magrill, acting as Agent, and S. Moore, Barrister,

- the French Government, by K. Rispal-Bellanger and A. Maitrepierre, acting as Agents,

- the Commission of the European Communities, by K. Banks, acting as Agent,

having regard to the Report for the Hearing,

after hearing the oral observations of Koninklijke Philips Electronics NV, represented by H. Carr and W.A. Hoyng; of Remington Consumer Products Ltd, represented by S. Thorley QC and R. Wyand QC; of the United Kingdom Government, represented by R. Magrill, assisted by D. Alexander, Barrister; and of the Commission, represented by K. Banks, at the hearing on 29 November 2000,

after hearing the Opinion of the Advocate General at the sitting on 23 January 2001,

gives the following

Judgment

Grounds

1 By order of 5 May 1999, received at the Court on 9 August 1999, the Court of Appeal (England and Wales) (Civil Division) referred for a preliminary ruling under Article 234 EC seven questions concerning 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, hereinafter the Directive).

2 Those questions have arisen in a dispute between Koninklijke Philips Electronics NV (Philips) and Remington Consumer Products Ltd (Remington) concerning an action for infringement of a trade mark which Philips had registered on the basis of use under the Trade Marks Act 1938.

Legal context

Community legislation

3 The purpose of the Directive is, as the first recital in its preamble states, to approximate the laws of the Member States on trade marks in order to remove existing disparities which may impede the free movement of goods and freedom to provide services and may distort competition within the common market.

4 However, according to the third recital in its preamble, the Directive is not intended to effect full-scale approximation of the laws of the Member States relating to trade marks.

5 Article 2 of the Directive provides, under the heading Signs of which a trade mark may consist:

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

6 Article 3 of the Directive, which lists the grounds for refusal or invalidity of registration, provides:

1. The following shall not be registered or if registered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

(e) signs which consist exclusively of:

- the shape which results from the nature of the goods themselves, or

- the shape of goods which is necessary to obtain a technical result, or

- the shape which gives substantial value to the goods;

...

3. A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that...