Technical functionality in European trade mark law

Publication details

Fhima, Ilanah; Technical functionality in European trade mark law (2021) 137 Law Quarterly Review, 113.

Abstract

The functionality exclusions play a vital role in maintaining competition within the trade mark system by preventing the registration as trade marks of characteristics of goods that other traders need to access so they can compete. This is particularly important given that any feature of a product, including its shape or that of its packaging, its colour, scent, flavour or even the way in which it moves could, in principle, be registered as a trade mark in Europe. Yet, despite its key role in EU trade mark law, the provision has been subject to little analysis. There are a handful of cases delimiting the doctrine and there is very little European academic commentary on the policies that underlie functionality.

This article identifies the policies behind the exclusion of ‘technical’ features – those necessary to achieve a technical result, and considers how these policies have influenced the provision’s scope. It also examines how other interests have shaped the provision and how these threaten to swamp the core interests underlying technical functionality. It does this by considering the mainly US literature on conflicting policies behind functionality and then evaluating their relevance to the scope of the EU technical functionality exclusion. It also demonstrates how the legislative wording which denies protection to signs which consists ‘exclusively’ of a shape, or another characteristic, which is necessary to obtain a technical result, has been interpreted to allow too many signs to escape the exclusion and proceed to registration. It is argued that this undermining is compounded because courts are willing to find likelihood of confusion in infringement or invalidity actions in instances in which similarity is based upon reproduction of functional feature/s alone. It concludes with suggestions of how the channelling policy and its inherent protection of the public domain can be restored to their central position.