Koninklijke Philips Electronics NV v Remington Consumer Products Ltd & Anor

Under section 3(2)(b) of the Trade Marks Act 1994, the court must identify the essential characteristics of a shape mark by considering the impression made on the average customer. It need not treat every feature contributing to the overall impression as essential.

A non-essential embellishment does not make registrable a shape that is otherwise functional. By contrast, an abstract two-dimensional device with eye appeal is not necessarily the functional shape of goods. Distinctiveness and descriptiveness are not mutually exclusive.

Philips brought infringement proceedings concerning a three-headed rotary electric-shaver shape mark. Remington counterclaimed for invalidity. Rimer J held that the 452 Mark was invalid under section 3(2)(b) of the Trade Marks Act 1994, and held that the Device Marks were invalid under section 3(2)(b) and, alternatively, sections 3(1)(b) and (c): [2004] EWHC 2327 (Ch).

Philips appealed. The principal issues were whether the 452 Mark was a functional shape and whether the two-dimensional Device Marks were functional or lacked distinctiveness.

Disposition. The court dismissed Philips’ appeal concerning the 452 Mark and allowed the appeal concerning the Device Marks.

1. Rimer J was entitled to find that the clover-leaf feature was not an essential feature of the 452 Mark. Identification of an essential feature depends on the evidence, the impact of the feature on the eye of the average customer and its contribution to the overall impression. It is a question of fact and degree. A feature need not be treated as essential merely because it contributes to the overall impression.
2. Once the clover-leaf feature was found not to be essential, the 452 Mark was, in substance, the same as the previously invalid functional 208 Mark. The embellishment did not create a valid registration. The 452 Mark was therefore invalid under section 3(2)(b) of the Trade Marks Act 1994.
3. For completeness, the court endorsed the judge’s alternative approach to functionality. The mark should be assessed as a whole, with its individual parts considered only as part of that overall assessment. Section 3(2)(b) does not require the court to dissect every part of every essential feature. The availability of alternative shapes achieving the same technical result does not overcome the exclusion. These points were not necessary to the disposition because the essential-feature conclusion was sufficient.
4. The judge was also entitled to find that the lower residual areas of the faceplate contributed to a smooth shaving operation. The existence of a successful alternative design without those areas did not establish that they performed no function.
5. The Device Marks were abstract, stylised two-dimensional images with eye appeal. They contained no technical elements or details and were not the shape of goods in the functional sense contemplated by section 3(2)(b). Their registration therefore did not confer a monopoly over three-dimensional rotary shavers. Actual use and public recognition were relevant to acquired distinctiveness, but not to the prior functionality issue.
6. The Device Marks were neither devoid of distinctive character under section 3(1)(b) nor exclusively descriptive under section 3(1)(c). A mark may convey a description of goods while also having distinctive character. No further reference to the Court of Justice under Article 234 was necessary.

1. Court of Appeal (Civil Division) On 26 January 2006, the court dismissed the appeal concerning the 452 Mark and allowed it concerning the Device Marks.
2. High Court of Justice, Chancery Division Rimer J, on 21 October 2004, declared the 452 Mark invalid under section 3(2)(b) of the Trade Marks Act 1994. He also held the Device Marks invalid under section 3(2)(b), and alternatively under sections 3(1)(b) and (c): [2004] EWHC 2327 (Ch).