Remington Rand Corp. v. Philips Electronics N.V.
A-633-93
MacGuigan J.A.
12/12/95
16 pp.
Appeal from Trial Division judgment refusing to expunge four trade mark registrations alleged to be invalid as functional features of electric shaver-Appeal concerning two marks: distinguishing guise, representation of actual triple-headed rotary electric head assembly and design mark, representation of same triple-headed rotary head assembly-Issue whether pictorial description of manufactured article, and in particular, some of its working parts, can be subject of trade mark registration-Appeal allowed as to both design mark and distinguishing guise-Some functionality permissible in registration of trade mark- Where functionality going either to trade mark itself or to wares, then essentially or primarily inconsistent with registration-Where functionality merely secondary or peripheral, no bar to registration-Where mark primarily functional as "part of ware", effect would be to grant applicants for registration monopoly on functional elements or characteristics of wares, thereby creating, in effect, patent under guise of mark-Precisely the case herein as mark referring to principal functional feature of Philips shaver, cutting heads-Shaver heads utilitarian in nature and three-headed equilateral triangular configuration functional- Therefore, design mark, by depicting those functional elements, primarily functional-Issue as to distinguishing guise entirely one of first impression-Matter resolved on basis of Pizza Pizza Ltd. v. Canada (Registrar of Trade Marks), [1989] 3 F.C. 379 (C.A.)-Distinguishing guise, as every trade mark, characterized by distinctiveness and must be governed by same considerations of functionality as design mark-While distinguishing guise necessarily possessing functional element or component, to extent such functionality relating primarily or essentially to wares themselves, it will invalidate mark-Distinguishing guise herein invalid as extending to functional aspects of Philips shaver-Where mark going beyond distinguishing wares of owner to functional structure of wares themselves, transgressing legitimate bounds of trade mark-Appellants did not have to proceed under Trade-marks Act, s. 13-Trade-marks Act, R.S.C., 1985, c. T-10, s. 13.