Philips shaver mark registration cut down by Court of Appeals

Sweden

The Svea Court of Appeals has overturned a decision of the Stockholm District Court and has revoked electronics giant Philips's trademark registration for the shape and configuration of the head of an electric shaver (Case T 691-97).

Philips registered the mark for goods in Class 8 of the Nice Classification in 1993. The registration consisted of a graphic representation of (i) the shaver head, which was made up of three circular rotating blades in the shape of an equilateral triangle, and (ii) a triangle-shaped cover.

Swedish company Rotary Shaver Sweden AB wanted to sell a similar shaver produced by a Japanese manufacturer. It therefore filed a claim for revocation of Philips's trademark on the grounds that it consisted exclusively of a shape that was necessary to obtain a technical result. In the alternative, it argued that the shape was mainly designated by the technical result and was thus devoid of any distinctive character.

The Stockholm District Court upheld Philips's trademark registration - a decision that contrasted with the principles set out by other courts in the European Union, which had held that such marks were not registrable. Rotary Shaver appealed.

The Svea Court of Appeals overturned the lower court's decision and revoked Philips's mark. It referred to Section 13(2) of the Swedish Trademarks Act, which states that a sign consisting exclusively of a shape that is necessary to obtain a technical result may not be registered as a trademark. The court noted that Section 13(2) is based on Article 3(1)(e) of the Community Trademark Directive. It next examined the European Court of Justice's (ECJ) ruling in a case referred to it by the UK Court of Appeal: Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. There, the ECJ examined, in the context of Article 3(1)(e), the same Philips shape mark as that at issue in the Swedish case and its ruling led the UK Court of Appeal to uphold the revocation of Philips's mark.

In light of the ECJ's decision, the Svea Court of Appeal held that the shape and positioning of the three circular blades in Philips's mark were chosen to obtain a compact shaver and the best shaving result. The design and layout of the blades therefore consisted exclusively of a shape that was necessary to achieve a technical result. It further stated that the triangular shape of the cover also had the exclusive purpose of fulfilling a technical result.

The decision puts Swedish case law in line with the ECJ's interpretation of Article 3(1)(e) of the Community Trademark Directive.

Anna Jussil and Thomas Randes, Magnusson Wahlin Qvist Stanbrook Advokatbyrå KB, Stockholm

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