The court also said that a business can only register a trade mark that has distinctive character by its nature or through the use made of the mark is capable of distinguishing its products from those of other businesses.
As a result of today’s ruling, Philips could lose its case in an English court over its trade mark for the shape of an electric shaver.
In 1966 Philips developed an electric shaver with three rotating heads in the shape of an equilateral triangle. In 1985 it registered a trade mark consisting of the graphical representation of the shape and configuration of the head of the shaver under English law. In 1995, rival company Remington began to manufacture and market in the UK a shaver in a similar shape to that used by Philips.
Philips sued Remington for infringement of its trade mark. Remington counter-sued for revocation of the trade mark registered by Philips on the ground that the “sign” on which the trade mark was based had no distinctive character.
The English Court of Appeal referred questions to the Court of Justice on the interpretation of the Trade Marks Directive. That Directive lists, among other things, the grounds for refusal or invalidity of registrations of trade marks. The English court asked the Court of Justice to interpret the directive on three points.
Firstly, the English court asked:
The Court today pointed out that the directive lays down two preconditions for a sign to constitute a trade mark: it must be capable both of graphic representation and of distinguishing the products of one undertaking from those of other undertakings.
The Directive allows registration to be refused for trade marks which are devoid of any distinctive character, descriptive marks, and marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.
However, that rule is qualified in that a sign may, through use, acquire a distinctive character which it initially lacked. It is therefore through the use made of it that the sign acquires the distinctive character which is a prerequisite for its registration.
However, the directive also prohibits the registration of signs which cannot constitute a trade mark. The Court points out that the directive seeks, by means of that prohibition, to exclude from registration signs which do not fulfil the second precondition for the registration of a trade mark.
Accordingly, only marks having a distinctive character by their nature or by the use made of them are capable of distinguishing their goods from the goods of other undertakings and are thereby capable of registration.
Secondly, the English court asked:
The Court observed that if at least a significant proportion of consumers or of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must rule that the requirement for registering the mark is satisfied.
However, in line with its case-law, the Court specified that such circumstances cannot be shown to exist solely by reference to general, abstract data, but must be assessed in the light of the presumed expectations of an average consumer of the category of goods in question.
Moreover, their identification of the product as originating from a given undertaking must be as a result of the use of the mark as a trade mark.
Thirdly, the English court asked:
The Court pointed out that the directive lists the grounds for refusal of signs consisting of the shape of a product exhaustively. The purpose of those grounds for refusal is to prevent the trade mark right from granting its proprietor a monopoly on technical solutions likely to be used by competitors.
Thus, the directive is intended to preclude the registration of shapes whose essential characteristics perform a technical function, and thus, not to prevent competitors from supplying a product incorporating such a function or at least choosing a technical solution incorporating such a function.
The Community provision thus pursues an aim which is in the public interest, as it requires that such a shape may be freely used by all.
As to whether the existence of other shapes which could achieve the same technical result can lead to the acceptance of registration of a sign, the Court ruled that there is nothing in the wording of the provisions of the Directive to allow such a conclusion.
Since these were questions referred for a preliminary ruling, it will be for the English court to apply to the case before it the interpretation of Community legislation made by the Court of Justice.