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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Philips Electronics NV v Remington Consumer Products Ltd [1999] EWCA Civ 1340 (5 May 1999)
URL: http://www.bailii.org/ew/cases/EWCA/Civ/1999/1340.html
Cite as: [1999] EWCA Civ 1340

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IN THE SUPREME COURT OF JUDICATURE CHPCF 1998/0103/3
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
(MR JUSTICE JACOB )
Royal Courts of Justice
Strand
London WC2

Wednesday 5th May 1999

B e f o r e:

LORD JUSTICE SIMON BROWN
LORD JUSTICE ALDOUS
LORD JUSTICE MANTELL

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PHILIPS ELECTRONICS NV
Claimant/Appellant
- v -

REMINGTON CONSUMER PRODUCTS LIMITED
Defendant/Respondent

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(Transcript of the handed down Judgment by
Smith Bernal Reporting Limited, 180 Fleet Street,
London EC4A 2HD
Tel: 0171 421 4040
Official Shorthand Writers to the Court)

- - - - - -

MR H CARR QC and MR P ACLAND (Instructed by Eversheds, Cloth Hall Court, Infirmary Street, Leeds) appeared on behalf of the Appellant

MR S THORLEY QC and MR R WYAND QC (Instructed by Messrs Lochners, Garven House, Station Road, Godalming) appeared on behalf of the Respondent

- - - - - -
J U D G M E N T
(As approved by the Court )
- - - - - -

©Crown Copyright
ALDOUS LJ:

As of 12th November 1985, the appellants, Philips Electronics NV, registered a trade mark consisting of a picture of a three headed rotary electric shaver. The trade mark which is appended to this judgment as annex A was registered under No. 1254208 in class 8 for "electric shavers included in class 8". I will refer to it as the trade mark.
By writ dated 4th December 1995, Philips sued Remington Consumer Products Limited for amongst other things infringement of the trade mark arising from the offer for sale and sale of an electric razor which I will refer to as the Remington razor. Remington did not dispute the sale. They denied infringement and alleged that the trade mark was invalid and counterclaimed for revocation. The grounds of invalidity were that the trade mark was not registrable because its registration offended:
(i) Section 3(1)(a) of the Trade Marks Act 1994 in that (a) it was not a sign and (b) was not capable of distinguishing shavers of one undertaking from those of other undertakings;
(ii) Section 3(1)(b) of the Act because the trade mark was devoid of any distinctive character;
(iii) Section 3(1)(c) of the Act because the trade mark consisted exclusively of a sign or indication which may serve, in trade, to indicate the kind or intended purpose or other characteristics of shavers;
(iv) Section 3(2) of the Act because the trade mark consisted exclusively of the shape, which (a) resulted from the nature of the goods themselves, or (b) was necessary to obtain a technical result, or (c) which gave a substantial value to the goods;
(v) Section 3(3)(a) of the Act because the trade mark was contrary to public policy;
(vi) Section 46(1)(b) of the Act because of non-use for 5 years without proper excuse;
The proceedings came before Jacob J. In his judgment ([1998] RPC 283) he held that the trade mark was a sign, but it was invalid because it was incapable of distinguishing and was devoid of any distinctive character. He also held that it consisted exclusively of a sign which served in the trade to designate the intended purpose of the goods and it consisted exclusively of a shape which was necessary to obtain a technical result and which gave substantial value to the goods. He went on to hold that even if the trade mark had been valid, it had not been infringed. He therefore ordered its revocation. Against that order Philips appealed. They contended that the trade mark was valid and infringed.
The judge rejected the allegations of invalidity based upon section 3(2)(a) of the Act and certain submissions on infringement. Remington contended before us that he was wrong to do so. They supported the judge's other conclusions.
At the outset, I express my appreciation to Mr Carr QC who appeared for Philips and Mr Thorley QC who appeared for Remington for their clear submissions. They have enabled me to come to a provisional view that the judge was right to hold the trade mark invalid. However most of the issues between the parties raise difficult questions of construction of the Trade Marks Directive, 89/104/EEC of 21st December 1988, such that a reference to the European Court of Justice under Article 177 of the Treaty is necessary before a final decision should be reached. That conclusion is borne out by the fact that similar issues arose in a case, at present pending before the Swedish Court of Appeal, in which the Swedish District Court [1997] ETMR 377 construed the Directive differently to Jacob J. I have therefore attempted to set out in my judgment the issues, the facts and my view on the law in a form which is understandable and convenient for the parties and the European Court of Justice.

A. The background facts.
These were set out by the judge at page 287 of his judgment; but the following account is sufficient for the purpose of this judgment. Philips started to develop an electric shaver in 1937 and in 1939 introduced into the market their first model. It was a single headed rotary action shaver. As the market developed, Philips wished to offer customers more choice and so developed their two headed rotary shaver and then in 1966 the 3 headed rotary shaver with the heads arranged substantially in the form shown in the trade mark.
The world-wide market for men's electric shavers is about 40 million pieces a year of which Philips' share is around 30%. The three headed rotary shaver accounts for 80% of Philips world-wide sales i.e. 9.5 million shavers world-wide a year. Since 1939 Philips have manufactured about 200 million 3 headed rotary shavers. Sales in this country have reflected in very general terms the world-wide pattern. For example in 1989 the UK market for electric shavers was about 2 million shavers per year. That has dropped over the years, but Philips has retained over 30% of the market and in 1996 their sales of the three headed rotary shavers exceeded 400,000.
Philips' competitors in the men's shaver market in the UK have in the past used what are known as the "foil" or "vibra" system. They use reciprocating as opposed to rotating cutters. Such foil or vibra shavers look very different to the Philips shaver.
Philips have extensively advertised their shavers in the UK, using promotions in the press and on television, point of sale material and newspaper and television advertisements.
There can be no doubt that the Philips shavers are well known in the UK. In particular the three headed rotary shaver is well known as a product made by Philips and widely recognised as such.
Remington are also a well known company which have manufactured and sold electric shavers of the vibra type for a number of years. Recently they have manufactured a three headed rotary shaver, the DT55, which was first sold in the UK in 1995. This is the shaver that is alleged to infringe. It has the form shown in annex B appended to this judgment.

B. The legislation.
The trade mark was registered under the Trade Marks Act 1938. Having regard to Schedule 3 of the Trade Marks Act 1994, it now has effect as if registered under the 1994 Act so that validity has to be considered under that Act, as does infringement because the alleged infringing sales occurred in 1995.
The 1994 Act is "An Act to make new provision for registered trade marks, implementing Council Directive No. 89/104/EEC of 21st December 1988 to approximate the laws of the Member States relating to trade marks ...." The Act, although not in exactly the same language as the Directive, must be construed to have the same effect. For the purpose of this appeal I have not discerned any difference in language which is of any importance. It is therefore possible to concentrate on the following provisions of the Act, although I will refer to the Directive.

"1 Trade marks
(1) In this Act a "trade mark" means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

...


3 Absolute grounds for refusal of registration
(1) The following shall not be registered-
(a) signs which do not satisfy the requirements of section
1(1),
(b) trade marks which are devoid of any distinctive
character,
(c) trade marks which consist exclusively of signs or
indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or
indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(2) A sign shall not be registered as a trade mark if it consists exclusively of-
(a) the shape which results from the nature of the goods
themselves,
(b) the shape of the goods which is necessary to obtain a
technical result, or
(c) the shape which gives substantial value to the goods.

(3) A trade mark shall not be registered if it is-
(a) contrary to public policy or to accepted principles of
morality, or
(b) of such a nature as to deceive the public (for instance as
to the nature, quality or geographical origin of the goods or service).

.....

9 Rights conferred by registered trade mark
(1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by the use of the trade mark in the United Kingdom without his consent.

The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.

(2) References in this Act to the infringement of a registered trade mark are to any such infringement of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of registration (which in accordance with section 40(3) is the date of filing the application for registration):

Provided that-
(a) no infringement proceedings may be begun before the
date on which the trade mark is in fact registered; and
(b) no offence under section 92 (unauthorised use of trade
mark, &c in relation to goods) is committed by anything done before the date of publication of the registration.

10 Infringement of registered trade mark
(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because-
(a) the sign is identical with the trade mark and is used in
relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in
relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

......

11 Limits on effect of registered trade mark
...

(2) A registered trade mark is not infringed by-
(a) the use by a person of his own name or address,
(b) the use of indications concerning the kind, quality,
quantity, intended purpose, value, geographical origin, the time of production of goods, or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trade mark where it is necessary to
indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
provided the use is in accordance with honest practices in industrial or commercial matters.

....

47 Grounds for invalidity of registration
(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).

Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid, if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

...

103 Minor definitions

....

(2) References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation."

C. General Observations.
C(i) The 1994 Act was passed to implement the Directive which swept away old law and introduced a new law of trade marks for the Member States of the European Union. That new law, drafted with input from representatives of the Member States, should not be assumed to be the same as the old UK law nor to be different from it. The law must be determined from the Act construed in the light of the Directive. Cases decided under the old law are no longer authoritative. However knowledge of the reasoning in such cases can provide awareness of the types of problems that arise during use of trade marks and a general feel for them.

C.(ii) The function of a trade mark is to identify the trade origin of goods or services. That function is important to protect both traders and consumers. It is a requirement of a trade mark under European law just as much as it has been under UK law. As stated by the European Court of Justice in Hag II [1990] CMLR 571 at 608.
"Consequently, as the Court has stated on many occasions, the specific subject-matter of a trade mark right is to grant the owner the right to use the mark for the first marketing of a product and, in this way, to protect him against competitors who would like to abuse the position and reputation of the mark by selling products to which the mark has been improperly affixed. To determine the exact effect of this exclusive right which is granted to the owner of the mark, it is necessary to take account of the essential function of the mark, which is to give the consumer or final user a guarantee of the identity of the origin of the marked product by enabling him to distinguish, without any possible confusion, that product from others of a different provenance: see Case 102/77 Hoffman-La Roche and Case 3/78, Centrafarm v. American Home Products ."
That function is recognised in the tenth recital of the Directive.
C.(iii) The Act sets out in section 1(Article 2) what signs are registrable. They include words, letters and shapes of goods. All have to be capable of distinguishing goods or services of one undertaking from those of other undertakings. The test for deciding whether a sign is capable of distinguishing goods or services of one undertaking from those of other undertakings must be the same whether the sign consists of a word, letters, a shape or other indication. Also it cannot differ depending on the nature of the word, letters or shape.

C.(iv) Section (Article) 3(1)(a) excludes from registration signs which do not have the features of a trade mark; such features being those which are capable of distinguishing the goods or services of one undertaking from those of other undertakings. It is to be noted that the proviso to section 3 (Article 3(3)) does not apply to section (Article) 3(1)(a). That proviso states that a trade mark shall not be refused registration under (b), (c) or (d) of section 3(1) if the trade mark has in fact acquired a distinctive character as a result of the use made of it. Comparison of the original draft of the Directive with the amended draft suggests that that was the intended result of decisions taken during the drafting of the Directive.

C.(v) Section (Article) 3(1)(b) excludes from registration trade marks which are devoid of any distinctive character. The words "distinctive character" suggest a different criteria to that provided for in section (Article 3(1)(a). Under section 1, a trade mark, to be registrable, must be capable of distinguishing goods or services of one undertaking from those of other undertakings; whereas under section 3(1)(b) the trade mark must, taking into account use, have some distinctive character.

C.(vi) Section 3(2)(b) and (c) (Article 3(1)(e)) appears to contain words seeking to exclude from registration certain shapes which are protectable under patents, registered designs, copyright and other such intellectual property rights. For many years it has been recognised that monopoly rights, other than trade marks, granted by the state are anti-competitive and can only be justified for a limited term and on well known grounds. Trade marks have been seen as an exception provided they only monopolise indications of origin and not inventions and designs. To enable monopolies granted in respect of patents, registered designs and the like to be extended by trade mark registrations would be contrary to the public interest unless justifiable on grounds of the public good.

D. Validity.
Remington contended that the trade mark was invalid upon most of the grounds set out in sections 3(1) and (2) of the Act. Those sections must be read and construed as part of the overall scheme for trade mark protection set out in the Act. Even so, I believe it is convenient to deal with each allegation of invalidity separately.

D.(1) Section (Article) 3(1)(a).
This section excludes from registration those signs which cannot constitute a trade mark as defined in section 1 (Article 2). Thus a sign which is not capable of distinguishing the goods of one undertaking from the goods of other undertakings is not registrable. Philips submitted that the evidence established that at the date of registration the trade mark did in fact distinguish their goods from those of other traders. It followed that it must be capable of distinguishing their goods from those of other traders. Remington submitted that the subsection required the Court to focus upon the trade mark as of the date of its registration and to enquire whether it had features which were capable of distinguishing. If it was a description of the goods being sold, without any capricious addition, it was not capable of distinguishing the goods of one trader from those of other traders who were entitled to manufacture and sell such goods. Philips criticised that submission of Remington because they submitted there was no requirement in the Act for any trade mark to contain a capricious addition. As the trade mark had by use become such as to denote goods of Philips, it must have been capable of distinguishing their shavers from those of other manufacturers.
In my judgment any issue of fact that there was between the parties is not relevant to the decision to be arrived at in this case which depends upon the construction of the statutory provisions. I have already referred in my recitation of the background facts to the extensive advertising carried out by Philips and the large number of sales made in the United Kingdom over the years. Such advertising has in general emphasised the trade mark Philips and the brand name Philishave , but the trade mark has been used. I would not have referred to it as "limping" whatever that may mean. Its use is better seen as supporting. The result has been that a substantial portion of traders in electrical goods and the public recognise the trade mark as being a representation of the head of the Philips three headed rotary shaver. If they saw a shaver with a head as shown in the trade mark or a picture of such a shaver they would, absent a statement to the contrary, believe that it came from Philips. They associate the shape of such a head with a rotary shaver made by Philips and nobody else. That is not surprising because Philips had, up to 1995, been the only company selling rotary shavers in the United Kingdom and their rotary shavers have been the most popular type of shaver in the United Kingdom and the majority of sales in recent times had a head as shown in the trade mark. In fact Philips have had a monopoly in the United Kingdom in rotary shavers and the public's perception reflects that fact It is against that background that the Court must decide whether the trade mark is capable of distinguishing one trader's goods from those of another trader.
I do not believe that the fact that a trade mark has by use become such as to denote goods of a particular trader necessarily means that it is capable of distinguishing as required by section 1 (Article 2). I have already pointed out that use is relevant when deciding registrability under section 3(1)(b), (c) and (d), but not under section 3(1)(a) (see Articles 3(1)(a), (b), (c) and 3(3)). That suggests that the capability of distinguishing depends upon the features of the trade mark itself, not on the result of its use. Thus a person who has had monopoly use of a trade mark for many years may be able to establish that it does in fact denote his goods exclusively, but that does not mean that it has a feature which will distinguish his goods from those of a rival who comes into the market. The more the trade mark describes the goods, whether it consists of a word or shape, the less likely it will be capable of distinguishing those goods from similar goods of another trader. An example of a trade mark which is capable of distinguishing is WELDMESH, whereas WELDED MESH would not be. The former, despite its primary descriptive meaning, has sufficient capricious alteration to enable it to acquire a secondary meaning, thereby demonstrating that it is capable of distinguishing. The latter has no such alteration. Whatever the extent of the use, whether or not it be monopoly use and whether or not there is evidence that the trade and the public associate it with one person, it retains its primary meaning, namely mesh that is welded. It does not have any feature which renders it capable of distinguishing one trader's welded mesh from other traders' welded mesh.
Shapes such as shown in the trade mark are pictorial descriptions of products. The test of registrability is the same for such shapes as that for word marks. The trade mark shows the head of a particular three headed rotary shaver and it would be recognised by the trade and public as such, albeit as one made by Philips. Even though there are a number of other designs of three headed rotary shavers that could be produced, the shape shown in the trademark is a shape which, absent patent, registered design, copyright or unfair trading protection, another trader is entitled to make. It is not capable of distinguishing Philips' shavers of that shape from those of other traders who produce shavers with a similar shaped head. I believe that is accepted by Philips; but they contend that such use of the shape by another trader is unlawful in that it would result in infringement of a valid trade mark registration. But that submission avoids the question of whether a picture of a three-dimensional article which is purely descriptive of the article is registrable. In my view the definition in the Act and the Directive prevents that happening. No doubt an application to register a picture of a reel for cotton or a flag for coffee would succeed as they are not descriptive of the goods for which registration is sought; but that does not mean that a shape of an article is registrable in respect of the article shown in the application. To so hold would enable a few traders to obtain registrations of all the best designs of an article and thereby monopolise those designs. In my view a shape of an article cannot be registered in respect of goods of that shape unless it contains some addition to the shape of the article which has trade mark significance. It is that addition which makes it capable of distinguishing the trade mark owner's goods from the same sort of goods sold by another trader.
The judge was right to conclude that the trade mark did not constitute a registrable trade mark as required by section (Article) 3(1)(a). However I do not believe that my reasoning is consistent with all that he said in British Sugar Plc v James Robertsons and Sons Ltd [1996] RPC 281.

D.(ii) Section (Article) 3(1)(b).
Section (Article) 3(1)(b) uses the words "devoid of any distinctive character". It would seem to follow that it is the character of the trade mark that has to be considered at the date of registration. The proviso (Article 3(3)) makes it clear that the distinctive character can be acquired as a result of use.
Philips submitted that there was no class of mark which was inherently devoid of distinctive character. In the present case the trade mark to a large proportion of the trade and the public, denoted a head of a shaver coming from Philips. Thus in so far as the trade mark did not have any distinctive character at first, it had acquired it by the date of registration. Remington submitted that before a trade mark can be said to have acquired a distinctive character by use, the use had to add a secondary meaning which was a trade mark meaning to the primary meaning. The fact that the relevant trade and public associated the trade mark with Philips did not mean that it had acquired that secondary meaning in the circumstances of this case, where Philips had been the sole user of the trade mark and the sole seller of goods made according to its design. In the ´present case the trade mark was purely descriptive of the particular design of a shaver head and therefore could not acquire and had not acquired a distinctive character by use. It followed that the trade mark was devoid of any distinctive character.
The scheme of the Directive and the Act appears to require that signs which are not capable of distinguishing are excluded for registration at the initial stage. Those which are capable of distinguishing will be excluded unless they have or have acquired some distinctive character. An example is the trademark WELDMESH to which I have referred. It is capable of distinguishing, but without use would retain its primary meaning of, welded mesh. It would therefore be devoid of any character that was distinctive. However use could provide a secondary meaning, namely that the welded mesh to which the trade mark was applied came from a particular trader. Upon that being established it would become registrable as it would pass the dual test laid down by section (Article) 3(1)(a) and (b).
The requirement under section (Article) 3(1)(b) is that the mark must have a distinctive character to be registrable. Thus it must have a character which enables it to be distinctive of one trader's goods in the sense that it has a meaning denoting the origin of the goods. In the present case the primary meaning of the trade mark is - a three headed rotary shaver of the design shown. There is no evidence to show that it has not retained such a meaning, although there is clear evidence that such a design of a head and perhaps other designs of rotary shaver heads are exclusively associated with Philips. Philips' case is based on the fallacy that extensive use of a purely descriptive mark such that it becomes associated with a trader means that the trade mark has a distinctive character. In circumstances where Philips have been the sole suppliers of rotary shavers in the UK the evidence relied on does not establish that the trade mark has acquired a secondary meaning. In fact I am unable to point to any feature or features of the trade mark which could be other than descriptive of a particular design of head for an electric shaver and which would enable the trade mark to acquire a distinctive character. The trade mark contains no feature which has trade mark significance which could become a distinctive character. In my view the judge was right to conclude that the trade mark was not registrable because of section (Article) 3(1)(b) in that it was devoid of distinctive character.


D.(iii) Section (Article) 3(1)(c).
Remington submitted that the trade mark should not have been registered as it consisted "exclusively of signs or indications which may serve, in trade, to designate the kind, .... intended purpose, ... or other characteristics of goods....." The judge accepted that submission because he was of the view that the trade mark had no capricious addition and was no more than a two-dimensional reproduction of a three-dimensional working part. The evidence did not establish that the relevant public took the shape as a trade mark of Philips.
Philips submitted that the judge's conclusion was wrong, basically for the same reasons that he was wrong when he concluded that the trade mark was not capable of distinguishing and was devoid of any distinctive character. They did not seriously submit that, if the judge was right that the trade mark was not capable of distinguishing and was devoid of any distinctive character, he was not right to hold that this subsection also prevented registration.
In the circumstances of the present case, the conclusion I have already reached, set out in relation to section (Article) 3(1)(a) and (b), mean that the trade mark should not have been registered under subsection (c). The trade mark was devoid of any distinctive character. It remained, even after use, a mark consisting exclusively of an indication of the kind of goods for which it was registered and of the intended purpose of those goods.

D.(iv). Section 3(2)(a) (Article 3(1)(e)).
Philips supported the judge's conclusion that the trade mark did not consist exclusively of a shape which resulted from the nature of the goods themselves. Essentially he concluded that this subsection did not exclude registration as there were other shapes of three headed electric shavers. Thus the representation that was registered did not result from the nature of electric shavers.
Remington challenged the reasoning and conclusion of the judge. They submitted that the words "the goods" should be construed as meaning the goods for which the trade mark was intended to be used and in respect of which it was said to have acquired a distinctive character; in this case the head of a three headed rotary shaver. That being so, the shape exclusively resulted from the nature of the goods.
In my judgment the words "the goods" refer to the goods in respect of which the trade mark is registered. Those are the goods which it must be capable of distinguishing and in respect of which the proprietor obtains, on registration, the exclusive right to use the trade mark. The words are used to refer to any of the goods falling within the class for which the trade mark is registered. For example, registration of a picture of a banana in respect of "fruit" would be just as objectionable as registration of that word would be in respect of "bananas". The purpose of the subsection is to prevent traders monopolising shapes of particular goods and that cannot be defeated by the skill of the applicant when selecting the class of goods for which registration is sought.
Subsection 2(a) has to be construed in the context of subsections (b) and (c). It is intended to exclude from registration basic shapes that should be available for use by the public at large. It is difficult to envisage such shapes, except those that are produced in nature such as bananas. But I believe that the judge was right to conclude that the trade mark was not prevented from registration by this subsection. The trade mark is registered in respect of "electric shavers". There is no one shape, let alone that depicted in the trade mark, which results from the nature of such shavers.

D.(v) Section 3(2)(b) (Article 2).
The judge held that the trade mark consisted exclusively of the shape which was necessary to obtain a technical result. He in substance agreed with the dissenting judgment in the Swedish District Court. Remington supported his conclusion and reasoning. Philips submitted that the conclusion reached by the majority in the Swedish District Court was correct for the reasons they gave. I will come to the rival submissions, but before doing so will set out the facts.
Philips established by evidence that the shape depicted in the trade mark was not necessary to achieve a particular standard of shaving. They produced designs which, if made, would have equal technical performance to the shavers they market and could be produced at equivalent cost. To obtain such a performance it is not necessary to have three rotary heads as opposed to one or four. Nor is there any technical reason to arrange the heads in an equilateral triangle configuration as opposed to for example a single row, a crescent or an isosceles triangular formation.
Philips submitted that on the evidence the judge was wrong when he came to the conclusion he did, whether their submissions or those of Remington as to the meaning of the subsection were right. I will come to that submission, but before doing so must deal with the difficult question of construction which divided the parties.
Philips pointed to the word "exclusively" to support their submission that the whole of the shape must obtain a technical result. They submitted that the word "necessary", introduced during drafting of the Directive, limited the exclusion to those shapes which were necessary for the technical result of the goods. Thus the trade mark was not excluded from registration because the technical result, shaving with rotary cutters, can be achieved at equivalent cost and with equivalent efficiency with a number of different shapes of three headed rotary shavers. Thus according to Philips if there are equally good shapes available, the subsection does not exclude registration. That submission found favour with the majority of the Swedish court (see p.390).
Remington do not dispute the conclusions of fact which I have set out above. They submitted, rightly in my view, that the evidence established that the essential features of the shape shown in the trade mark are designed to achieve and do achieve a technical result. That they submit is sufficient to bar registration of the trade mark. If a total analysis of all the essential features of the shape concludes that they are there for technical reasons, namely to obtain the technical results, then the shape is not registrable. That submission formed the basis of the dissenting judgment in Sweden and was accepted by Jacob J.
The subsection must be construed so that its ambit coincides with its purpose. That purpose is to exclude from registration shapes which are merely functional in the sense that they are motivated by and are the result of technical considerations. Those are the types of shapes which come from manufacture of patentable inventions. It is those types of shapes which should not be monopolised for an unlimited period by reason of trade mark registration, thereby stifling competition. Registrable trade marks are those which have some characteristic which is capable of and does denote origin.
In my judgment the restriction upon registration imposed by the words "which is necessary to obtain a technical result" is not overcome by establishing that there are other shapes which can obtain the same technical result. All that has to be shown is that the essential features of the shape are attributable only to the technical result. It is in that sense that the shape is necessary to obtain the technical result. To adopt the meaning suggested by Philips will enable a trader or traders to obtain registration of all the alternative shapes that were practicable to achieve the desired technical result. That would result in the subsection being given a meaning which would not achieve the purpose for which I believe it was intended. I agree with the judge and with the dissenting judgment in the Swedish District Court.
As to Philips' submission that whatever the construction of the subsection their trade mark is registrable, I believe that it is founded upon a misapprehension of the facts. As I have already pointed out, the trade mark does not contain any feature having trade mark significance. It is a combination of technical features produced to achieve a good practical design. I conclude that the judge was right in this respect also.

D.(vi) Section 3(2)(c) (Article 3(1)(e)).
The judge said:
"Good trade marks add value to goods - that is one of the things they are for. So one must not take this exclusion too literally."
He must be right. He went on:
"I think that what is meant is an exclusion of shapes which exclusively add some sort of value, design or functional appearance or perhaps something else but I cannot think of anything (to the goods disregarding any value attributable to a trade mark) i.e. source identification (function)."
The judge concluded that the shape shown in the trade mark was recognised as having an engineering function and for that reason it added substantial value to the product and was unregistrable.
Philips submitted that the exclusion in this subsection was aimed at preventing a trader from monopolising by way of a trade mark registration shapes which added a substantial value to the goods over other shapes, e.g. a lampshade, a telephone designed to appeal to the eye. Such designs should be protected as registered designs or the like protection, not by trade mark registration. They went on to submit that the shape shown in the trade mark did not have that character and it did not give it any substantial value when compared with the value of other equivalent shapes. Thus the trade mark was not excluded from registration by this subsection.
I have been persuaded by Philips that the construction placed on this subsection by the judge was not correct. There may be overlap between this subsection and the subsection which excludes shapes necessary to obtain a technical result, but the purpose is different. The latter is intended to exclude functional shapes and the former aesthetic-type shapes. Thus the fact that the technical result of a shape is excellent and therefore the article can command a high price does not mean that it is excluded from registration by subsection (c). The subsection is only concerned with shapes having "substantial value". That requires a conclusion as to whether the value is substantial, which in my view requires that a comparison has to be made between the shape sought to be registered and shapes of equivalent articles. It is only if the shape sought to be registered has, in relative terms, substantial value that it will be excluded from registration.
In the present case, the shape registered by Philips has a substantial reputation built up by advertising and reliability and the like. That in my view is not relevant. What has to be considered is the shape as a shape. If that is done I do not believe that the evidence established that the registered shape has any more value than other shapes which were established to be as good as and as cheap to produce as that which is registered. In my judgment, registration was not prevented by this subparagraph.

E. Infringement.
As the trade mark registration is in my judgment invalid, the dispute on infringement does not need to be considered. However the European Court of Justice may conclude that the construction that I placed upon Article 3 of the Directive is not correct with the result that the registration is valid. I therefore believe it appropriate to consider the dispute on infringement on the assumption that the trade mark is valid.
The relevant provisions of the Act are sections 9(1), 10(2)(b) and 11(2) (see Articles 5(1)(b) and 6(1)(b)). Remington accepted before us that the head of their shaver is similar to that shown in the trade mark and that Philips established that a likelihood of confusion existed. They submitted that they had not infringed as their use was not "trade mark use" and because the use was an indication concerning the kind or intended purpose or other characteristics of the goods (section 11(2)(b), Article 6(1)(b)) and was necessary to indicate the intended purpose of the shaver (section 11(2)(c)).

E.(i) Trade mark use.
Remington drew attention to section 9 which provided that registration gave exclusive rights "in the trade mark which are infringed by use of the trade mark". They submitted that to infringe that right, the use had to be trade mark use namely use denoting origin. That was emphasised by Article 5(5) which presupposes that infringing use is trade mark use. As this case was not trade mark use there was no infringement. Their submission can be explained by taking the example of the well-known trade mark "Mothercare". They accept that that trade mark would be infringed by use of the words denoting that a book was published by the proprietor of the trade mark. However they submitted that it would not be infringed by use of the words in the title of a book, e.g. "Mothercare: the correct way" as that would not be trade mark use. A similar submission found favour with Lord McCluskey in Bravado Merchandising Service Ltd v Mainstream Publishing (Edinburgh) Ltd [1996] FSR 205. However it was rejected by Jacob J in the British Sugar case. In the present case the judge accepted Remington's submission that the use was not use that indicated origin, but declined to decide whether trade mark use was a requirement under the Act and the Directive.
For my part I prefer the submission of Philips that found favour in the British Sugar case namely that trade mark use is not essential. There is nothing in sections 9 or 10 which require an infringing use to be trade mark use and section 11(2) (Article 6) contains a comprehensive list of the exclusions that were thought appropriate. That being so, any use not falling within that list will infringe, whether or not it is trade mark use. In any case I would expect any use which was not trade mark use to fall within the list. I therefore reject Remington's defence upon this ground.

E.(ii) Section 11(2)(e), (Article 6(1)(b)).
Two issues divided the parties. First whether Remington's use is an indication concerning the kind or intended purpose or other characteristics of the goods, and second whether the use was in accordance with honest practice in industrial or commercial matters.
As to the second issue, the judge held that Remington's use was honest. Philips submitted, as the judge found, that Remington had copied. Upon that basis they submitted that Remington's use was not honest commercial practice. I believe the judge was correct. I accept that where there is a valid intellectual right copying may be a commercial practice which is not honest. But that is not the case here. If copying per se were to be held to be a dishonest commercial practice, the development of competition would be eroded.
As to the first issue, Section 11(2)(b) (Article 6) uses similar words to section 3(1)(c) (Article 3(1)(e)); but there is a crucial difference. The word "exclusively" does not appear in section 11(2)(b). Further section 11 requires the Court to consider the use alleged to infringe. It therefore does not follow that because the trade mark was validly registered the registration must be infringed; nor that because the trade mark is invalid, that there would have been no infringement.
The question to be decided under section 11(2)(b) depends on the meaning to be given to the words and an analysis of the alleged infringing use. In my view the head of the Remington shaver depicts the head of a three headed rotary shaver. In my judgment that use is and would be seen as an indication as to the kind of shaver and what was its intended purpose. I conclude that the judge was right on this matter.

E.(iii) Section 11(2)(b) (Article 6(1)(c))
The judge concluded that this subsection did not provide Remington a defence. I agree. The purpose of this subsection is to allow such use as "This film is suitable for a Kodak camera". The purpose is not to allow use of valid trade marks (assumed) except where "necessary" to indicate the purpose. The shape of a three headed rotary shaver does indicate the purpose of the product, but the particular shape is not necessary to make that indication.

F. Generally
Philips placed before us draft questions which they thought would be suitable for this Court to refer to the European Court of Justice. Remington took the view that it would not be possible to give guidance as to the terms of any questions until judgment had been given. In the light of the conclusion reached by this Court it will be necessary to draft questions to be referred to the European Court of Justice. That being so, the parties should be given an opportunity to put forward their views as to the appropriate questions before they are drafted by the Court and referred to the European Court of Justice.


MANTELL LJ:
I agree.


SIMON BROWN LJ:
I also agree.


ORDER: Appeal stayed for reference to the European Court. Draft questions to be submitted by the appellants within seven days. Responses to be provided by the respondent within seven days thereafter. Best endeavours to be used by both sides to continue exchanging views until, within 30 days, either a proposed agreed draft of questions or, if agreement is not reached, a draft in so far as agreed with written argument as to what is not agreed, is submitted to the court.

(Order not part of agreed judgment)
ANNEX A
ANNEX B


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