This is the first in a series of three articles which looks at the restrictions to registration of shape marks. This article looks at the restriction of registering the shape of the actual goods themselves.

Perhaps the most prominent case in this area is that of Philips Electronics NV v Remington Consumer Products Ltd (No 2) [1999] RPC 809. In this case the ECJ held that a shape determined by a technical function of the product was not registrable, this applied to the famous Philips shaver head, the shape of which was deemed necessary to its technical function.

The basis of the idea in this ruling is that such shapes should really be registered as registered designs. Registered designs provide lesser protection than registered trade marks and are based on the idea that such designs should not be restricted from public use after a period of time as this will stifle development.

Other famous cases on this point include:

Societe des Produits Nestle SA v Uniler plc [2002] EWHC 2709 (Ch), [2003] RPC 35 where it was held that the shape of Vienetta ice cream resulted from the nature of the product itself and thus was not registrable;

Societe des Produits Nestle SA v Mars UK Ltd [2004] EWCA Civ 1008 where an application for the 3d shape of a polo mint was made. The application was without the writing on the polo. The application was rejected.