Remington Rand Corp. v. Philips Electronics N.V.
T-1695-91
McGillis J.
8/10/93
9 pp.
Application to expunge two design trade marks, being two-dimensional representations of triple headed rotary shaver head assembly, and two distinguishing guises on basis line drawing or visual representation of functional apparatus-Philips marketing electric rotary shavers since 1939-During 1960s, market situation requiring design and marketing on short notice of product providing improved shaving performance-Quickly introduced triple headed rotary shavers arranged in equilateral triangular configuration-In mid-70s decided this product had become its image-Adoption of other systems to be considered only if substantial improvements in shaving performance could be achieved-To date no other system introduced-Marketing policy and promotional activity concentrating heavily on triple headed shavers and resulting in high degree of consumer acceptance and commercial success-Wares represented in two-dimensional design trade marks never registered as trade marks-Two-dimensional design trade marks used as symbol on packaging for shavers-Philips only company in Canada marketing triple headed shaver-Philips' trade mark registrations preventing Remington from marketing triple headed rotary shaver arranged in equilateral triangular configuration in Canada although does so in U.S.A.-Head assembly on Remington shaver indistinguishable from that of Philips-Inference Remington, which already sells many designs of shavers, wishes to benefit from reputation and goodwill created by Philips-In support of argument trade marks functional and invalid, Remington arguing Philips using registrations to protect best possible configuration for triple headed rotary shaver-Remington's expert's evidence as to best possible design for use in triple headed shaver worthless as blatant plagiarism of affidavit of different witness in other proceedings-Although Philip's counsel not cross-examining affiant, in view of summary procedure outlined in R. 704, entitled to file affidavit evidence exposing Remington's witness-Witness lacking degree of independence required for expert and possessing no readily discernible opinions of his own-Remington failing to establish equilateral triangular configuration best design for triple headed shaver-Concept of invalidity of trade mark registration due to functional use or characteristic developed in case law-Mark itself must contain functional elements or components-Two-dimensional marks themselves mere depictions of objects inspiring them-Contain no functional elements or components-Remington failing to discharge onus of proving invalidity of two two-dimensional marks-Also failing to establish factual basis supporting contention utilitarian functionality dictating design of triple headed shaver-Although equilateral configuration one of better designs for triple headed shaver, not only or best one-Facts not establishing design dictated by functionality, as Philips forced to move quickly by market conditions-Registration of distinguishing guise expunged if likely to limit unreasonably development of any art or industry (Trade-marks Act, s. 13(3)) or if entry on register not accurately expressing or defining existing rights of person appearing to be registered owner (s. 57)-By virtue of definition as shaping of or mode of wrapping wares, distinguishing guise necessarily possesses functional element-To permit expungements based on functionality would be to allow inherent aspect of its statutory nature to operate as basis for challenge to validity-Functionality not relevant to validity of registrations of distinguishing guise trade marks-Since Remington not seeking to expunge distinguishing guise registrations on any other basis, failed to meet onus-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2, 13, 57-Federal Court Rules, C.R.C., c. 663, R. 704.