Absolute Grounds: Functionality Flashcards
s3(2) TMA 1994 / Article 4(1)(e) TMD 2015
A sign shall not be registered if it consists exclusively of
(a) a shape which results form the nature of the goods
(b) a shape which is necessary to obtain a technical result
(c) a shape which gives substantial value to the goods
‘exclusively’: The essential features (Lego ECJ: can register if major non excluded elements)
s3(2)(a) TMA 1994 / Article 4(1)(e)(i) TMD 2015
Natural Functionality: a shape which results from the nature of the goods themselves.
‘the goods themselves’: What are the goods as a practical business matter? (FI, Phillips) CA: greater weight on articles of commerce.
‘result from’: Where the designer had no real or effective choice in the shape the product can take (Phillips CA: a number of different ways 3 headed razor could have been designed)
cf Nestle: Other shapes did not prevent finding that KitKat was a basic shape.
s3(2)(b) TMA 1994 / Article 4(1)(e)(ii) TMD 2015
Technical Functionality: A shape necessary to obtain a technical result.
‘necessary’: Dictated by the technical solution to which the design gives effect (Lego ECJ)
‘technical result’: the manner in which they function, not how they are manufactured (Nestle)
S3(2)(c) TMA 1994 / Article 4(1)(e)(iii) TMD 2015
Commercial/Aesthetic (Technical!) Functionality: A shape which gives substantial value to the goods.
Hauck: The external features that do not perform a technical or practical function but substantially enhance the attractiveness of the good. (now also technical!)
Not the value of the good as a TM (e.g. RR Grille) Phillips: Good TM add value.
B&O: The good in that shape cf. other shapes
‘Essential features of a shape’ a problematic gateway (ALL)
‘Shape’: Louboutin- a colour mark? A mark consisting of a shape but also seeking protection for colour?
‘Essential features’: The most important elements of the shape mark (Lego/Nestle)
> Determined casuistically
> The overall visual impression
> Presumed perception of average consumer relevant but not decisive - views of experts/other IP rights
Consequences: If excluded features form a substantial part then a competitor might be treated as having used a similar mark - no exception permitting competitors to use excluded aspects.
The usefulness of the ‘substantial value’ test (TECHNICAL / AESTHETIC & COMMERCIAL)
Is Aesthetic functionality supported by the rationale at all? Arguable that such shapes should remain free unless they also function as trademarks.
Gielen: It would be preferable to work with distinctiveness - no good reason to deprive it of such protection simply because the shape has an extra value of attractiveness.
Hauck: Exclusion is not limited to the shape of goods only having artistic or ornamental value but also applies to signs which, besides their aesthetic function, have other essential functions (i.e. technical)
Hauck, AG: the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market…!
The potential overlap between nature of the goods and goods producing a technical result (NATURAL / TECHNICAL)
Nature: If generic function of good is X, would it natural for the shape of a good to possess an essential feature Y?
Technical result: If a good possesses a natural essential feature Y, would the essential feature enable a specific good to perform a technical function X?
