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Remington: trade-mark functionality

Dimock Stratton's lawyers represented Remington Rand in a lawsuit over the configuration of the three-headed rotary shaver.   

Phillips had designed a triple-headed rotary shaver arranged in an equilateral triangular configuration. This shaver had been marketed since 1966; in the 1970s, Phillips decided that this product had become the "image" of Phillips and trade-mark registrations were obtained, depicting the configuration of the shaver. Remington had decided to market a similar shaver in Canada, and sought to expunge the Phillips trade-marks on the basis that they were visual representations of a functional apparatus, and that Phillips was attempting to use its registrations to protect the best possible configuration for a triple-headed rotary shaver. The application was dismissed. The Court concluded that the Remington head assembly was virtually identical to that of the Philips shaver, and inferred that Remington wanted to benefit from the reputation and goodwill of the Phillips trade-marks. The equilateral triangular configuration was one of the better configurations for a triple-headed shaver, but it was not the only or the best. The marks themselves were mere depictions of the objects which inspired them and as such, they contained no functional elements or components.

Dimock Stratton successfully appealed the dismissal of the expungment application on behalf of Remington, and Phillip's trade-mark registrations were expunged on the basis that the registrations were invalid because the alleged trade-marks were functional. Although functionality was a basis for invalidating a trade-mark, previous case law had not consistently expressed what nature and degree of the functionality was needed to disqualify a trade-mark registration. In this new leading case on functionality in trade-marks, the Federal Court of Appeal stated that the determinative issue was the kind of functionality in question. If functionality went either to the trade-mark itself or to the wares, then it was essentially or primarily inconsistent with registration. If the functionality was merely peripheral, with no essential connection with the wares, then it did not act as a bar to registration. In Phillip's case, their trade-mark were intrinsic references to the principal functional feature of their shaver.

Remington Rand Corp. v. Phillips Electronics N.V. (1994), 51 C.P.R. (3d) 392 (F.C.T.D.); (1995), 64 C.P.R. (3d) 467 (F.C.A.)