Judgment of the Court of 18 June 2002 in Case C-299/99 (Reference for a preliminary ruling from the Court of Appeal (England & Wales) (Civil Division): Koninklĳke Philips Electronics NV v Remington Consumer Products Ltd (Approximation of laws — Trade marks — Directive 89/104/EEC — Articles 3(1) and (3), 5(1) and 6(1)(b) — Signs capable of being trade marks — Signs consisting exclusively of the shape of the product)
Date: 2002-08-10
Institutions: Court of Justice
Subjects: industrial counterfeiting, interpretation of the law, product designation, product quality, trade mark, trade-mark law

10.8.2002

EN

Official Journal of the European Communities

C 191/1

I

(Information)

COURT OF JUSTICE

COURT OF JUSTICE

JUDGMENT OF THE COURT

of 18 June 2002

D. Ruiz-Jarabo Colomer, Advocate General; D. Louterman-
Hubeau, Head of Division, for the Registrar, has given a
judgment on 18 June 2002, in which it has ruled:

in Case C-299/99 (Reference for a preliminary ruling from
the Court of Appeal (England & Wales) (Civil Division):
Koninklijke Philips Electronics NV v Remington Con-
sumer Products Ltd (1)

(Approximation of laws — Trade marks — Directive 89/
104/EEC — Articles 3(1) and (3), 5(1) and 6(1)(b) — Signs
capable of being trade marks — Signs consisting exclusively
of the shape of the product)

1.

2.

(2002/C 191/01)

(Language of the case: English)

There is no category of marks which is not excluded from
registration by Article 3(1)(b), (c) and (d) and Article 3(3) of
First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade
marks which is none the less excluded from registration by
Article 3(1)(a) thereof on the ground that such marks are
incapable of distinguishing the goods of the proprietor of the
mark from those of other undertakings.

In order to be capable of distinguishing an article for the
purposes of Article 2 of the Directive, the shape of the article in
respect of which the sign is registered does not require any
capricious addition, such as an embellishment which has no
functional purpose.

In Case C-299/99: Reference to the Court under Article 234
EC by the Court of Appeal (England and Wales) (Civil Division)
(United Kingdom) for a preliminary ruling in the proceedings
pending before that court between Koninklijke Philips Elec-
tronics NV and Remington Consumer Products Ltd, on the
interpretation of Articles 3(1) and (3), 5(1) and 6(1)(b) of First
Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade
marks (OJ 1989 L 40, p. 1),
the Court, composed of:
G.C. Rodrı´guez Iglesias, President, P. Jann, F. Macken (Rappor-
teur), N. Colneric and S. von Bahr (Presidents of Chambers),
C. Gulmann, D.A.O. Edward, A. La Pergola, J.-P. Puissochet,
Judges;
J.N. Cunha Rodrigues and C.W.A. Timmermans,

3. Where a trader has been the only supplier of particular goods
to the market, extensive use of a sign which consists of the
shape of those goods may be sufficient to give the sign a
distinctive character for the purposes of Article 3(3) of Directive
89/104 in circumstances where, as a result of that use, a
substantial proportion of the relevant class of persons associates
that shape with that trader and no other undertaking or believes
that goods of that shape come from that trader. However, it is
for the national court to verify that the circumstances in which
the requirement under that provision is satisfied are shown to
exist on the basis of specific and reliable data, that the presumed
expectations of an average consumer of the category of goods or
services in question, who is reasonably well-informed and
reasonably observant and circumspect, are taken into account
and that the identification, by the relevant class of persons, of
the product as originating from a given undertaking is as a
result of the use of the mark as a trade mark.

C 191/2

EN

Official Journal of the European Communities

10.8.2002

4. Article 3(1)(e), second indent, of Directive 89/104 must be
interpreted to mean that a sign consisting exclusively of the
shape of a product is unregistrable by virtue thereof if it is
established that the essential functional features of that shape
are attributable only to the technical result. Moreover, the
ground for refusal or invalidity of registration imposed by that
provision cannot be overcome by establishing that there are
to be
other shapes which allow the same technical result
obtained.

milk and milk products sector (OJ 1992 L 405, p. 1), as
amended by Council Regulation (EEC) No 1560/93 of 14 June
1993 (OJ 1993 L 154, p. 30), the Court (Sixth Chamber),
composed of: N. Colneric, President of the Second Chamber,
acting for the President of the Sixth Chamber, C. Gulmann and
V. Skouris (Rapporteur),
Judges; L.A. Geelhoed, Advocate
General; H.A. Rühl, Principal Administrator, for the Registrar,
has given a judgment on 20 June 2002, in which it has ruled:

(1) OJ C 299 of 16.10.1999.

1. When Member States determine, pursuant to the first subpara-
graph of Article 7(1) of Council Regulation (EEC) No 3950/
92 of 28 December 1992 establishing an additional levy in
the milk and milk products sector, as amended by Council
Regulation (EEC) No 1506/93 of 14 June 1993, the detailed
rules under which the reference quantity attached to a holding
is to be transferred upon the sale or lease of the holding, they
may provide, pursuant to that provision, that part of the
reference quantity is not to be transferred with the holding to
the producer taking it over but is to be added to the national
reserve by means of a ‘clawback’ mechanism. Such a measure
must be adopted and applied:

JUDGMENT OF THE COURT

(Sixth Chamber)

of 20 June 2002

in Case C-313/99 (Reference for a preliminary ruling from
the High Court): Gerard Mulligan, Tim O’Sullivan, Tom
Power, Hugh Duncan v Minister for Agriculture and
Food, Ireland, Attorney General (1)

(Additional levy in the milk and milk products sector —
Regulation (EEC) No 3950/92 — Transfer of the reference
quantity on sale or lease of the holding — Whether a
Member State may claw back part of the reference quantity
and add it to the national reserve)

2.

(2002/C 191/02)

(Language of the case: English)

— in a way which does not compromise the objectives of the
common agricultural policy and in particular those of the
common organisation of the markets in the milk sector;

— on the basis of objective criteria, and

— in accordance with the general principles of Community
law such as, in particular, the principles of legal certainty
and protection of legitimate expectations, proportionality,
non-discrimination and respect for fundamental rights.

The principle of legal certainty does not preclude, as a general
principle of Community law, a Member State from choosing,
for the purpose of adopting national measures pursuant to
Article 7(1) of Regulation No 3950/92, a procedure whereby
a legislative instrument authorises the competent authority,
such as a minister, to adopt those measures by means of a
decision. That principle requires that the publicity for such
measures be of such a nature as to inform the natural or legal
persons concerned by the measures of their rights and obligations
under them. It is for the national court to determine, on the
basis of the facts before it, whether that is the case in the main
proceedings.

In Case C-313/99: Reference to the Court under Article 234
EC by the High Court (Ireland) for a preliminary ruling in
the proceedings pending before that court between Gerard
Mulligan, Tim O’Sullivan, Tom Power, Hugh Duncan and
Minister for Agriculture and Food, Ireland, Attorney General,
on the interpretation of Council Regulation (EEC) No 3950/92
of 28 December 1992 establishing an additional levy in the

(1) OJ C 299 of 16.10.1999.