Philips's razor mark gets a close shave

In Koninklijke Philips Electronics NV v Remington Consumer Products Ltd ([2004] EWHC 2327 (Ch), October 21 2004), the High Court of England and Wales has ordered the cancellation of Koninklijke Philips Electronics NV's two-dimensional mark for a three-headed razor on the basis of lack of distinctiveness. Philips had brought infringement proceedings against Remington Consumer Products Ltd's use of the design of a three-headed electric rotary shaver head.

Philips's three-headed shavers account for about 85% of its overall sales of electric shavers and Remington is its main competitor in that market. Philips has been engaged in a concerted course of action around the world to register the shape of its electric shavers as trademarks and to enforce those trademarks against Remington.

Philips had already sought to establish a monopoly in the creation and marketing of three-headed shavers with a plain, triangular faceplate, by attempting to register as a trademark a three-headed shaver head.

After referring certain questions to the European Court of Justice (ECJ), the Court of Appeal of England and Wales decided that all the essential features of the mark were attributable to achieving a technical result. Accordingly, it refused registration under Section 3(2)(b) of the Trademarks Act 1994.

In its second attempt at cornering the UK market, Philips relied on an existing trademark registration that had a slightly more fanciful feature - a clover leaf pattern on the faceplate in which each of the three heads is situated - and three slightly more abstract representations of a three-headed shaver. All four trademarks were registered as two-dimensional pictures.

Most of the debate in this case centred on the first of these four marks. The key issue (and the one that formed the basis of the court's decision) was whether the mark was invalid under Section 3(2)(b) of the Trademarks Act 1994.

In the earlier UK litigation, Philips had argued that a shape that achieved a technical result would be registrable if other shapes would achieve the same technical result. The ECJ rejected this submission, finding that where the essential characteristics of the shape of a product are attributable solely to the technical result, registration of a sign consisting of that shape is precluded, even if the technical result could be achieved by other shapes.

Philips argued in the second case that while the clover leaf faceplate is an essential characteristic of the shape of the shaver's head, it is not attributable only to a technical result, nor was it chosen to fulfil a technical function. Philips claimed that unless every part of every essential feature of the shape is attributable solely to the technical result, the mark is validly registered. In other words, if a certain feature was included in order to achieve a technical result and also for another purpose, such as aesthetic reasons, the mark would be registrable. Philips submitted that the clover leaf pattern on the faceplate (i) is an essential feature of the shape, and (ii) was included for aesthetic reasons.

The High Court's Justice Rimer viewed with considerable scepticism any rhetoric that exaggerated the aesthetic significance of shaver faceplates, stating:

"The average … user does not, I believe, buy his shaver as an item with which to impress others in the gym or to adorn his mantelpiece. He buys it solely because he regards it as a piece of kit which will enable him to execute his daily shave in a speedy, convenient, comfortable and effective way; and he so regards it because Philips market[s its] shavers as pieces of functional equipment which will achieve these objectives for him. Philips do[es] not market them as a work of art, because that is not what they are."

In any case, he found that the aesthetic value or otherwise of the design was irrelevant to the operation of Section 3(2)(b):

"I find it difficult to accept that the ECJ can have intended that, given a shape whose essential features are all attributable to the technical result, the application or otherwise of the prohibition should then depend on whether or not the particular shape also had some alleged aesthetic appeal. That would make the question of registration dependent on the outcome of an essentially subjective uncertainty into an important area of commerce which is anyway complicated enough."

Philips also claimed that there were certain areas of the clover leaf that did not fulfil any technical function. Rimer found, however, that it did not make any difference that there were some small areas of the faceplate that arguably performed no function. Section 3(2)(b) does not require an analysis of every square millimetre of each essential feature of a shape to see whether it performs a technical function. In any event, he found that every part of the clover leaf performed a technical function in this case.

Rimer concluded that Section 3(2)(b) absolutely precluded Philips from registering the clover leaf faceplate as a trademark, even if it could prove that the mark had become distinctive. For the same reasons, the court found that each of the other three more minimalist or abstract marks set out above was invalid and should be revoked.

Ian Starr and Jane Glover, Ashurst, London