A Close Shave
Introduction
The 1994 Trade Marks Act introduced into English law the possibility of registering the shape of goods as a trade mark. Under previous registration this had not been possible.
As a result, businesses initially become very excited at the prospect of obtaining perpetual monopolies that would prevent their competitors from producing goods that adopted the same (or a confusingly similar) shape to the shape of their goods.
However, the same Act of Parliament also decreed that the shape of goods could not be registered where the shape was necessary to obtain a technical result.
The European Court of Justice subsequently confirmed that this meant that shapes whose 'essential characteristics' performed a technical function could not be registered as trade marks. The logic behind this was to prevent businesses from obtaining monopolies in technical solutions for goods. Such a scenario would impair legitimate competition.
Recently the Court of Appeal has reaffirmed this principle in the case of Koninklijke Philips Electronics NV v Remington Consumer Products Ltd and Anor. In summary, Philips tried to obtain a UK trade mark registration for the face of one of its three-headed rotary electric shavers. Remington objected on the basis that the trade mark consisted exclusively of the shape of the goods, and such shape was necessary to obtain a technical result (i.e. a closer, smoother shave).
The Court of Appeal agreed with Remington and held that Philips' trade mark registration was invalid. The overall shape of the face of the three-headed rotary shaver was found to be purely functional, offering a technical solution to the problem of achieving a smooth shave. The fact that such a result (i.e. a 'smooth shave') could be achieved by using other (non-trade marked) shapes was irrelevant. The Court was not prepared to grant Philips a monopoly in a shape whose essential characteristics performed a technical function.
As Carl Steele, a senior associate in Ashfords' IP Team comments "The decision of the Court of Appeal is a useful reminder that no-one should be entitled to achieve a monopoly in a technical effect, by trying to register the same as a trade mark. Monopolies of this nature are only conferred through patents and registered designs, which have a limited life span and ultimately expire. Trade marks can last forever, provided they are used correctly and all renewal fees are paid as and when due. It is not the role of trade marks to create and preserve perpetual monopolies in technical solutions."
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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