C-299/99

OPINION OF MR RUIZ-JARABO — CASE C-299/99

O P I N I O N OF ADVOCATE GENERAL RUIZ-JARABO C O L O M E R delivered on 23 January 2001 1

1. In this case, the Court is requested to rule 4. In 1985, Philips filed a trade mark on the scope of the exclusion from trade application consisting of a picture of a mark registration of 'signs which consist shaver having those characteristics. That exclusively of the shape of goods which is mark was registered under the Trade necessary to obtain a technical result', Marks Act 1938. provided for by the second indent of Article 3(1 )(e) of the First Council Directive (89/104/EEC) of 21 December 1988 to approximate the laws of the Member States relating to trade marks. 2 On the basis of Schedule 3 of the Trade Marks Act 1994, 3 which repealed the former legislation, Philips's trade mark now has the same effects as if it had been registered under the new Act.

Background

5. Philips has advertised its shavers in the 2. According to the order for reference and United Kingdom extensively and they are other documents in the file, the facts of the very well known in that country. In par- main dispute may be summarised as fol- ticular, the three-headed rotary shaver is lows. well known as a product manufactured by Philips and widely recognised as such.

3. Since 1966, Philips Electronics NV ('Philips') has marketed a shaver compris- 6. In 1995, Remington Consumer Products ing three rotary heads arranged in the shape Limited ('Remington') began to manufac- of an equilateral triangle.

7. On 4 December 1995, Philips brought an action against Remington claiming, inter alia, infringement of its trade mark. Remington counterclaimed for revocation of the Philips trade mark. ' 1 . Is there a category of marks which is not excluded from registration by Article 3(1)(b) to (d) and Article 3(3) of the Council Directive 89/104/EEC ("the Directive"), which is none the less excluded from registration by Article 3(1)(a) of the Directive (as being incapable of distinguishing the 8. The High Court of Justice, Chancery goods of the proprietor from those of Division, Patents Court, which heard the other undertakings)? case at first instance, upheld the counter- claim and revoked Philips' trade mark on the ground that it was incapable of dis- tinguishing the goods concerned and was devoid of any distinctive character. It also held that the trade mark consisted exclus- 2. Is the shape (or part of the shape) of an ively of a sign which served in trade to article (being the article in respect of designate the intended purpose of the goods which the sign is registered) only and of a shape which was necessary to capable of distinguishing for the pur- obtain a technical result and which gave poses of Article 2 if it contains some substantial value to the goods. It went on to capricious addition (being an embel- hold that, even if the trade mark had been lishment which has no functional pur- valid, it had not been infringed. pose) to the shape of the article?

3. Where a trader has been the only Philips appealed against that decision, supplier of particular goods to the claiming that the trade mark was valid market, is extensive use of a sign, and that its trade mark had been infringed. which consists of the shape (or part of

5. Article 3(1)(c) of the Directive applies to "trade marks which consist exclus- (ii) believe that goods of that shape ively of signs or indications which may come from that trader, absent a serve, in trade, to designate the kind, statement to the contrary? quality, quantity, intended purpose ... of the goods or service". Article 6(1)(b) of the Directive applies to the use by a third party of "indications concerning the kind, quality, quantity, intended purpose ... of goods or services". The word "exclusively" thus appears in 4. (i) Can the restriction imposed by the Article 3(1)(c) and is omitted in words "if it consists exclusively of Article 6(1)(b) of the Directive. On a the shape of goods which is necess- proper interpretation of the Directive, ary to achieve a technical result" does this omission mean that, even if a appearing in Article 3(1)(e)(ii) be mark consisting of the shape of goods overcome by establishing that there is validly registered, it is not infringed are other shapes which can obtain by virtue of Article 6(1)(b) in circum- the same technical result or stances where

(ii) is the shape unregistrable by virtue thereof if it is shown that the (i) the use of the shape of goods essential features of the shape are complained of is and would be

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taken as an indication as to the Analysis of the questions kind of goods or the intended purpose thereof and

Definition of the issue in the main proceed- ings

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invalidity in subparagraphs (b) to (d) of 16. Subparagraph (e), however, is not of Article 3(1) and that contained in subpara- the same legal nature. It applies to three- graph (e). dimensional signs which arise solely from the nature of the goods themselves, seek to obtain a technical result or give substantial value to the goods. This exclusion is based not on the lack of distinctiveness of certain n a t u r a l , functional or o r n a m e n t a l shapes — in which case it would only 13. According to subparagraph (b), trade serve to define the scope of subparagraph marks which are devoid of any distinctive (b) — but reflects the legitimate concern to character are not be registered or if regis- prevent individuals from resorting to trade tered are liable to be declared invalid. Signs marks in order to extend exclusive rights which do not fulfil the primary purpose of over technical developments. distinguishing the goods and which, there- fore, do not make it possible to identify their origin, that is to say their manufac- turer, are not covered by the exclusive protection conferred on trade marks.

17. Consistent with that logic, the legis- lature did not include subparagraph (e) among the grounds for refusal which may be Overcome' by virtue of Article 3(3). 14. S u b p a r a g r a p h s (c) and (d) of Natural, functional or ornamental shapes Article 3(1) exclude from registration cer- are incapable, by express intention of the tain signs on account of their generic nature legislature, of acquiring a distinctive char- (inasmuch as they serve to designate the acter. It is altogether otiose — as well as kind, quality, intended purpose, value, contrary to the scheme of the Directive — geographical origin, or the time of produc- to consider whether or not such shapes tion of the goods) or because they have have acquired distinctiveness. become customary. They contain, there- fore, a partial legal definition of the con- cept of distinctive character.

such a nature as to deceive the public. 22. In the order for reference, the national Thus, if an application were made to court observes that the essential features of register the trade mark 'Babykiller' for a Philips' trade mark are attributable to a pharmaceutical abortifacient, there is no particular function. doubt that it would not be necessary to analyse the distinctive character — which, in any event, it is likely to possess — of that word. Merely by virtue of being contrary to public policy it would have to be barred from registration. 23. In those circumstances, I consider that it would be appropriate to look at the distinguishing capacity of Philips' trade mark only if it were accepted that the only 19. In my view, for the purpose of resolv- shapes having a functional purpose, for the ing the present case, only the second indent purpose of subparagraph (e), are those of subparagraph (e), which excludes from necessary to obtain a technical result. registration 'signs which consist exclusively of the shape of goods which is necessary to obtain a technical result', is relevant.

24. On the basis of the foregoing, I con- 20. A trade mark having the characteristics sider it appropriate to analyse first the of that at issue in the main proceedings, fourth question referred by the United that is to say consisting of an overhead Kingdom court. view of a shaver with three rotary heads arranged in the shape of a triangle, seems to be the perfect example of a merely func- tional shape. Indeed, at least in appearance, its essential features fulfil a function and are there only in so far as they perform that function. Question 4

27. The national court seeks to ascertain, in particular, whether a merely functional shape is caught by the exclusion provided for in subparagraph (e) even when it can be shown that the same technical result can be I arrive at the same conclusion by applying achieved by other different shapes. a teleological interpretation to the provi- sion.

28. 'Merely functional' is to be under- stood — as suggested by the national court — as any function whose essential 30. The immediate purpose in barring features are attributable to the achievement registration of merely functional shapes or of a technical result. Use of the phrase shapes which give substantial value to the 'essential features' means that a shape goods is to prevent the exclusive and containing an arbitrary element which, permanent right which a trade mark from a functional point of view, is minor, confers from serving to extend the life of such as its colour, does not escape the other rights which the legislature has prohibition. sought to make subject to limited periods.

4 — The French text reads 'signes constitués exclusivement par la forme du produit nécessaire à l'obtention d'un résultat technique', the Spanish text 'signos constituidos exclusiva- mente por la forma del producto necesaria para obtener un resultado técnico', the Italian text 'segni costituiti esclusi- vamente dalla forma del prodotto necessaria per ottenere un There is nothing in the wording of sub- risultato tecnico', and the German text 'Zeichen, die paragraph (e) of Article 3(1) which makes ausschliesslich bestehen aus der Form der Ware, die zur Herstellung einer technischen Wirkung erforderlich ist'. No it possible to conclude that a merely italics in the original texts.

32. In the case of the second indent of subparagraph (e), the interpretation of which is at issue, it is clear that the Community legislature sought to delimit the scope of protection of a trade mark 34. The wording used in the Designs Direc- from that of an industrial patent. Likewise, tive for expressing that ground for refusal it distinguishes between the scopes of does not entirely coincide with that used in patents and designs respectively. It is there- the Trade Marks Directive. That discrep- fore highly significant that the directive on ancy is not capricious. Whereas the former the legal protection of the latter instru- refuses to recognise external features ments 6 granted no exclusive rights in 'which are solely dictated by its technical features of appearance of a product which function', the latter excludes from its pro- are solely dictated by its technical function tection 'signs which consist exclusively of (Article 7(1)). Similarly, the proposal for the shape of goods which is necessary to the related regulation 7 provides that Com- obtain a technical result'. In other words, munity design rights are not to be granted the level of 'functionality' must be greater in order to be able to assess the ground for refusal in the context of designs; the feature 5 — By way of illustration, the European patent, as governed by concerned must not only be necessary but the Convention of 5 October 1973, protects inventions essential in order to achieve a particular susceptible of industrial application for a period of 20 years, whereas Directive 98/71/EC of the European Parliament technical result: form follows function. 8 and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 29) provides for This means that a functional design may, a term of protection which may be renewed up to a total term of 25 years (Article 10). Article 13 of the amended proposal for a Council Regulation on Community designs (Com 00) 660 final) is to the same effect. 6 — Cited in footnote 4, above. 8 — The semantic contrast which exists in the German version between the adjectives 'erforderlich' and 'bedingt' is par- 7 — ibidem. ticularly telling.

36. It is logical that the bar for assessing 39. If we were to accept Philips' argument, whether a ground for excluding a func- which consists in accepting evidence of the tional form applies is set higher for designs existence of other shapes capable of achiev- than for trade marks: the nature and scope ing the same technical performance with of their protection are completely different the aim of preventing the exclusion of a from one another. merely functional mark, nothing would stop an undertaking from registering as trade marks all imaginable shapes which achieved such a result, thus obtaining a permanent monopoly over a particular technical solution. Furthermore, the trade mark court would have to carry out a 37. First, a trade mark seeks to protect the comprehensive assessment concerning the identity of the origin of the goods and, equivalence of the performance of the therefore, indirectly, the goodwill which different technical processes. the goods attract, whereas designs — like patents — seek to protect the goods, in their own right, as an economic factor: their substantial value (in the case of designs) or the value which derives from their technical performance (in the case of 40. Thirdly, even if it should be accepted patents). In that sense, it is entirely logical that the restrictive test for the ground for that the legislature is less concerned by the refusal put forward by Philips carries only a strict delimitation between designs and slight risk that trade mark rights might

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unduly encroach on the field of patents, I Questions 1, 2, 3, 5, 6 and 7 cannot see why the public interest should tolerate such a risk, since there are other effective ways available to owners of a product to protect their commercial asset, such as adding arbitrary features.

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45. Nevertheless, for the reasons set out 48. By the third question, the referring above, I do not believe that this question is court again asks about the consequences, relevant in resolving the matter. this time in relation to Article 3(3), of a merely functional shape or, as that court puts it, which does not include any capri- cious addition.

46. By its second question, the referring court seeks to ascertain whether the defini- tion of 'trade mark' contained in Article 2 of the Directive, when applied to shapes, 49. For the reasons already set out above, it means, in so far as it requires that they is also not necessary to examine the possi- must be capable of distinguishing, that they bility of a merely functional, three-dimen- must contain some arbitrary addition, such sional sign acquiring a distinctive character as an embellishment with no functional through use. Indeed, Article 3(3) refers purpose. exclusively to subparagraph (b) to (d) of paragraph (1).

47. Whether or not there are functional features in a three dimensional trade mark 50. By its fifth question, the court making must be examined in the light of subpara- the reference seeks clarification of the term graph (e) of Article 3(1), so that I would 'exclusively', as contained in Article 3(1)(c) refer to the analysis of the fourth question of the Directive. of the national court. Moreover, as I explained above, that provision, contrary to what happens in relation to the cases provided for in subparagraph (b) to (d), does not have as its purpose the protection of the distinctive character of a trade mark. To that extent, the question is irrelevant. 51. By its sixth question, the national court asks the Court of Justice for guidance on the existence of identicality as required by Article 5(1) of the Directive.

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