FFW acts for Remington in second landmark trade mark case
28 October 2004
City law firm Field Fisher Waterhouse acted for Remington, in
its latest victory against Philips concerning Philips attempt to
monopolise the market for three headed rotary shavers. The judgment
clarifies the “technical result” exclusion for the purpose of the
registrability of shapes as trade marks. This is the first
time in the UK the European Courts of Justice (ECJ) ruling in a
previous action between the parties (made on 18 June 2002) has been
applied.
The First Action
Trade mark litigation between Philips and Remington, which was
purchased by the Rayovac Corporation in September 2003, began when
Remington introduced a three-headed rotary shaver (the DT55) onto
the UK market after many years of Philips enjoying a patent
monopoly in this segment of the market.
Philips’ patent had expired but it was also the proprietor of a
number of trade marks depicting the head of a shaver (see
notes for editors).
Philips sued Remington for trade mark infringement. However,
Section 3(2)(b) of the Trade Marks Act states that:
“a sign shall not be registered as a trade mark if it consists
exclusively of the shape of goods necessary to obtain a technical
result.”
Remington successfully argued that Philips trade mark was
exclusively functional and should be revoked. Following an
unsuccessful appeal by Philips to the Court of Appeal and a
referral of several questions on the interpretation of trade mark
law to the ECJ, the trade mark was revoked.
The Second Action
In 2000, Remington introduced the FastTrack RS2623 and FastTrack
RS2843 shavers onto the UK market. Following their launch
Philips issued proceedings against Remington for infringement of
the trade mark.
The Second Action differs from the First in that Philips’ Second
Action Trade Mark is a different representation of the head of a
three-headed rotary shaver, the main difference being the addition
of a black line broadly in the shape of a clover leaf around the
three heads. The Remington FastTrack RS2623 and FastTrack
RS2843 shavers, unlike the DT55 which was a wet/dry shaver,
incorporate a clover leaf shape raised rim on the head of the
shaver.
Remington argued that the clover leaf is exclusively functional
and operates as a skin tightening rim assisting in producing a
closer shave and that it also supports and prevents grazing of the
skin.
Remington denied infringement of the trade mark and asserted that
the heads of the Remington FastTrack RS2623 and FastTrack RS2843
shavers are not confusingly similar to Philips Second Action Trade
Mark. Remington also asserted that its use of the clover leaf
feature on the FastTrack RS2623 and FastTrack RS2843 shavers is in
accordance with honest practices in industrial or commercial
matters.
Remington therefore argued that, like the First Action ,
Philips’ Second Action Trade Mark should also be revoked.
Mr Justice Rimer found in favour of Remington. The decision was
handed down on Thursday 21st October.
Simon Chapman, partner in FFW’s IP litigation group, acted for
Remington. He says:
“This is the first time the ECJ ruling has been applied in the UK,
and should be reviewed by any business concerned with the
protection of the shape of products. Philips were seeking to
argue that features which had a technical function had also been
chosen because of their aesthetic appeal and as such they were
entitled to a continuing monopoly. The Court did not
agree. Technical features are protected by a patent monopoly
of limited duration and this judgment reaffirms that Philips cannot
keep competitors out of the market by extending its monopoly via
trade mark protection.”
For further press information, please contact:
Ben Girdlestone, Communications Manager, on +44 (0)20
7861 4968
Louise Eckersley, PR Executive, on +44 (0)20 7861 4120