This long running punch-up concerns the "functionality principle". Lord Justice Mummery summarised its as follows at para :
"The principle ensures that shape marks, like other trade marks, are indicators of the origin or source of the goods in question. They do not enlarge the scope of trade mark protection to cover technical solutions for the goods themselves. Other forms of intellectual property, such as patents, designs and copyright, are available for the protection of particular rights of defined scope and limited duration in specified aspects of the goods themselves. If trade marks were allowed to confer rights in technical solutions for the goods themselves, legitimate competition in the relevant market for the goods would be impaired. A shape mark registered in breach of the functionality principle would enable its proprietor to protect his products from the competition of other traders' goods in a shape, which was necessary to obtain a similar technical result. Competition considerations prevail in the legislation, which implements the functionality principle. There are excluded from registration, prior to any consideration of the conventional trade mark questions of the inherent or acquired distinctiveness of a mark, signs consisting exclusively of the shape of goods, which is necessary to obtain a technical result. "
The issue has come before the courts of Sweden, France, German, Spain and Italy and, as Lord Justice Mummery observed, "The foreign judgments speak with one voice .................. that Philips' shape marks for their three-headed rotary electric shaver are invalid by reason of their functionality."
This was an appeal by Philips against Mr Justice Rimer's dismissal of a claim against Remington for infringement of its 3-head razor shape mark and its stylized 3-head device mark. The claim failed because the judge found both registrations to be invalid. The question for the court was whether the marks were invalid by reason of s. 3 (2) (b) of the Trade Marks Act 1994. That sub-section imposes a preliminary bar on the registration of functional shapes as trade marks for goods:
"A sign shall not be registered as a trade mark if it consists exclusively of-................................................
(b) the shape of goods which is necessary to obtain a technical result,"
Only if that preliminary obstacle can be overcome is it possible to consider the more familiar trade mark issues of the inherent or acquired distinctiveness of a mark.
Philips launched a number of attacks on the trial judge's judgment. It was unable to persuade the Court of Appeal in respect of the shape mark. However, the Court allowed the appeal in respect of the device mark.