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The exclusion from protection of functional shapes under the trade mark law of the EU

Schulyok, Felix LU (2010) JAEM03 20101
Department of Law
Abstract
Article 4 of the Community Trade Mark Regulation (CTMR) defines signs of which a Community trade mark may consist in a very wide manner, expressly including the shape of goods or of their packaging. However, with regard to such shapes, the Regulation in its Article 7(1)(e) introduces a, in comparison with other signs, additional ground for refusal that has to be overcome when seeking registration.

This thesis focuses, more specifically, on Article 7(1)(e)(ii) CTMR, which prohibits the registration of functional shapes. So far there has only been one judgment of the Court on the interpretation of this provision, namely the famous judgment in Philips, with a second case, Lego, currently pending on appeal. Although Philips clarified... (More)
Article 4 of the Community Trade Mark Regulation (CTMR) defines signs of which a Community trade mark may consist in a very wide manner, expressly including the shape of goods or of their packaging. However, with regard to such shapes, the Regulation in its Article 7(1)(e) introduces a, in comparison with other signs, additional ground for refusal that has to be overcome when seeking registration.

This thesis focuses, more specifically, on Article 7(1)(e)(ii) CTMR, which prohibits the registration of functional shapes. So far there has only been one judgment of the Court on the interpretation of this provision, namely the famous judgment in Philips, with a second case, Lego, currently pending on appeal. Although Philips clarified certain important issues, other questions were not addressed by the Court or still require clarification.

Thus, this thesis attempts to draw a comprehensive picture of the interpretation of Article 7(1)(e)(ii) CTMR and of a logically structured test that should be followed when assessing the registrability of shapes as trade marks. It is suggested that such a test consists of three steps.

As a first step the essential features of the shape seeking registration must be identified. This must be done independently from any considerations as to functionality and, therefore, the relevant point of view for this determination should be the one of the relevant consumers. After having identified the essential characteristics of the shape, the body responsible for the assessment must analyze whether these are functional. In this second step the advice of experts having the necessary technical knowledge is, in most cases, required. In the third step, which will, however, not be subject of this thesis, it is necessary to clarify whether the shape is distinctive and whether any other absolute ground for refusal applies.

This thesis concludes that the outlined test is very cautious and restrictive towards the registrability of shapes. While this is justified on grounds of the present legislation, it is submitted that it can lead to undesirable results in a situation in which a shape has become highly distinctive but is also found to be functional. Such a shape can be freely used by everyone, which means, in other words, that competitors can profit from the goodwill created by the shape. The thesis, thus, suggests that, de lege ferenda, an assessment of functionality under the concept of distinctiveness might be preferable. (Less)
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author
Schulyok, Felix LU
supervisor
organization
course
JAEM03 20101
year
type
H2 - Master's Degree (Two Years)
subject
keywords
European Business Law
language
English
id
1693278
date added to LUP
2010-10-18 15:28:26
date last changed
2010-10-18 15:28:26
@misc{1693278,
  abstract     = {Article 4 of the Community Trade Mark Regulation (CTMR) defines signs of which a Community trade mark may consist in a very wide manner, expressly including the shape of goods or of their packaging. However, with regard to such shapes, the Regulation in its Article 7(1)(e) introduces a, in comparison with other signs, additional ground for refusal that has to be overcome when seeking registration.

This thesis focuses, more specifically, on Article 7(1)(e)(ii) CTMR, which prohibits the registration of functional shapes. So far there has only been one judgment of the Court on the interpretation of this provision, namely the famous judgment in Philips, with a second case, Lego, currently pending on appeal. Although Philips clarified certain important issues, other questions were not addressed by the Court or still require clarification.

Thus, this thesis attempts to draw a comprehensive picture of the interpretation of Article 7(1)(e)(ii) CTMR and of a logically structured test that should be followed when assessing the registrability of shapes as trade marks. It is suggested that such a test consists of three steps.

As a first step the essential features of the shape seeking registration must be identified. This must be done independently from any considerations as to functionality and, therefore, the relevant point of view for this determination should be the one of the relevant consumers. After having identified the essential characteristics of the shape, the body responsible for the assessment must analyze whether these are functional. In this second step the advice of experts having the necessary technical knowledge is, in most cases, required. In the third step, which will, however, not be subject of this thesis, it is necessary to clarify whether the shape is distinctive and whether any other absolute ground for refusal applies.

This thesis concludes that the outlined test is very cautious and restrictive towards the registrability of shapes. While this is justified on grounds of the present legislation, it is submitted that it can lead to undesirable results in a situation in which a shape has become highly distinctive but is also found to be functional. Such a shape can be freely used by everyone, which means, in other words, that competitors can profit from the goodwill created by the shape. The thesis, thus, suggests that, de lege ferenda, an assessment of functionality under the concept of distinctiveness might be preferable.},
  author       = {Schulyok, Felix},
  keyword      = {European Business Law},
  language     = {eng},
  note         = {Student Paper},
  title        = {The exclusion from protection of functional shapes under the trade mark law of the EU},
  year         = {2010},
}