## Facts

- Philips marketed a rotary electric shaver whose head had three circular rotating shaving heads arranged in an equilateral triangle.
- Philips obtained a United Kingdom trade mark registration for a graphic representation of that three-headed triangular shaving head.
- For a substantial period, Philips was the only supplier of three-headed rotary shavers in the UK, and the configuration became associated by consumers with Philips.
- Remington later marketed electric shavers with a similar triangular three-headed configuration.
- Philips sued for trade mark infringement; Remington counterclaimed for revocation, arguing (among other grounds) lack of distinctiveness and that the sign consisted exclusively of a shape necessary to obtain a technical result under Directive 89/104/EEC.
- The UK High Court revoked the mark, finding it lacked distinctive character and was functional.
- On appeal, the UK Court of Appeal referred questions to the European Court of Justice for a preliminary ruling interpreting Directive 89/104/EEC.

## Issues

1. Whether Article 3(1)(a) of Directive 89/104/EEC creates a distinct “incapable of distinguishing” ground for refusal beyond Article 3(1)(b)–(d) and Article 3(3).
2. Whether a product-shape sign can qualify as a trade mark under Article 2 only if it contains an arbitrary, non-functional “capricious addition.”
3. What showing is required for a product shape to acquire distinctive character through use under Article 3(3), particularly where the proprietor was previously the sole supplier.
4. Whether the functional-shape exclusion in Article 3(1)(e)(ii) is avoided if other shapes could achieve the same technical result.
5. How Articles 5(1) and 6(1)(b) apply to use of similar shapes, including when shape-related use is descriptive rather than trade mark use.

## Decision

- The Court ruled there is no separate “incapable of distinguishing” refusal category under Article 3(1)(a) beyond the distinctiveness-related rules in Article 3(1)(b)–(d) and Article 3(3).
- The Court held Article 2 does not require a product shape to include a “capricious addition” to be capable of constituting a trade mark.
- The Court held acquired distinctiveness for a shape requires proof that the relevant public, because of use, perceives the shape as indicating commercial origin; mere association with one producer (including due to prior market exclusivity) is insufficient by itself.
- The Court held Article 3(1)(e)(ii) bars registration (and supports invalidity) for signs consisting exclusively of a shape necessary to obtain a technical result, regardless of whether alternative shapes could achieve the same result.
- The Court stated that if a shape mark is valid, infringement under Article 5(1) depends on third-party use as a trade mark that affects or is liable to affect trade mark functions; Article 6(1)(b) permits descriptive use of indications of characteristics only if consistent with honest practices.
- The Court provided interpretive answers for the national court to apply; it did not finally decide validity or infringement in the underlying dispute.

## Legal Principles

- Distinctiveness-related refusals and invalidity under the Directive are governed by Article 3(1)(b)–(d) and Article 3(3); Article 3(1)(a) is not a catch-all for additional non-distinctiveness exclusions.
- Product shapes may constitute registrable “signs” in principle; the Directive does not condition registrability on decorative or arbitrary additions to the shape.
- Acquired distinctiveness for a shape demands evidence that consumers rely on the shape as a badge of origin, not merely that they recognize it or link it with one producer.
- The functional-shape exclusion in Article 3(1)(e)(ii) is absolute: a shape whose essential features are necessary to obtain a technical result cannot be monopolized via trade mark registration, even if other shapes could perform the same function.
- Descriptive or informational use about product characteristics may be permitted only within the honest-practices limit and does not authorize use of a shape as an origin indicator where a valid mark exists.

## Conclusion

The Court clarified that product shapes can qualify as trade marks without arbitrary embellishment, but functional shapes are categorically excluded from registration, and acquired distinctiveness for shapes requires proof that consumers perceive the shape itself as denoting trade origin rather than merely recognizing it from market presence.


Koninklijke Philips Elecs. NV v. Remington Consumer Prods. Ltd., Case C-299/99, [2002] E.C.R. I-5475 (ECJ 2002)