E. Kiziltoprak, M.

Galli

Protection for Mixed Trademarks?

The Shape Between Distinctiveness and Technical Function

LL.M. in Intellectual Property

WIPO – University of Turin – ITC ILO
2012/2013

Electronic copy available at: http://ssrn.com/abstract=2692309

 TABLE OF CONTENT

1. ABSTRACT................................................................................................................. 3

2. INTRODUCTION: Non-Traditional Trademarks.................................................. 4

3. SHAPE TRADEMARKS............................................................................................ 6

3.1. Definition..................................................................................................................... 6

3.2. Distinctiveness............................................................................................................. 8

3.3. Absolute Ground for Refusal: art. 7(1)(e) of E.C. Council Regulation 207/2009...... 9

3.3.1 – Delimiting trademarks law from patent law.................................................... 10

3.3.2 – Protection of competition................................................................................. 11

4. MIXED TRADEMARKS: Between Distinctiveness and Technical Function........ 12

4.1. The Proceedings in Lego........................................................................................ 12

4.2. Exclusively? The Essential Feature of a Shape...................................................... 13

4.3. Necessary? The Technical Function of a Shape..................................................... 16

5. CONCLUSIONS: The same standard for Shape and Mixed Trademarks............... 18

BIBLIOGRAPHY................................................................................................................. 19

Electronic copy available at: http://ssrn.com/abstract=2692309

 1. ABSTRACT

The purpose of the following article is to analyse the legal and jurisprudential position

of the “mixed trademarks”, a controversial sub-category of the shape trademarks, defined as

those particular shape marks in which technical functional and distinctive elements are

combined together. The issue about the validity of mixed trademarks arises with reference to

art. 7(1)(e) of E.C. Council Regulation 207/20091, which establishes an absolute refusal of

registration rule for those trademarks whose shape exclusively consists of (i) the nature of the

good itself, (ii) the shape necessary to obtain a technical result, (iii) the shape which gives

substantial value to the good. Furthermore, particular emphasis will be put onto the recent

decision on the Court of Justice of the European Union (CJEU) on this unique legal issue, the

famous “Lego Case”2.

The structure of the article will consist on a first general introduction to the “big

family” of non-traditional trademarks. After that, it will focus in particular on the main

characteristics of the shape trademarks, in the light of the restriction of art. 7(1)(e)(ii) of E.C.

Council Regulation 207/2009. Then, it will analyse the features of the mixed trademarks,

between distinctiveness and technical function. Finally, a short analysis of the Lego Case will

be provided, in order to explain the most recent position of the CJUE on mixed trademarks,

referring also to the first decision that the European Supreme Court took on this issue, the

famous Philips vs. Remington.

1
Article 7 - Absolute grounds for refusal
1. The following shall not be registered:
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;
2
Court of Justice of the European Union September 14 2010, Case C-48/09 P, Lego Juris A/S vs. OHIM and
Mega Brands

3

 2. INTRODUCTION: Non-Traditional Trademarks

Among all Intellectual Property Rights (IPR), trademarks are the most commonly

used and they have a special and respectable place in the IPRs system: they have big

importance among companies, because of the huge intrinsic communicative power, and also

consumers use those signs in order to identify the goods and services provided by one

company from others goods or services provided by another one. Article 15(1) of the TRIPS

Agreement defines trademarks as:“any sign, or any combination of signs, capable of

distinguishing the goods or services of one undertaking from those of other undertakings”.

In its choose of words: “Such signs, in particular words including personal names, letters,

numerals, figurative elements and combinations of colours as well as any combination of

such signs, shall be eligible for registration as trademarks. Where signs are not inherently

capable of distinguishing the relevant goods or services, Members may make registrability

depend on distinctiveness acquired through use. Members may require, as a condition of

registration, that signs be visually perceptible”. According to this definition, a general

definition of what specifically can be considered a trademark doesn’t exist. So, the list

provided by the aforementioned provision can be considered as “non-exhaustive”: therefore,

forms of expressions like smells, colours or shapes can constitute a trademark too, if they

embody the characteristics prescribed by the law. Furthermore, Article 2 of the Directive

2008/95/EC3 (the "Trademark Directive") provides a non-exhaustive list of signs of which a

trademark may consist: “Any signs capable of being represented graphically, particularly

words, including personal names, designs, letters, numerals, the shape of goods or of their

packaging, provided that such signs are capable of distinguishing the goods or services of

one undertaking from those of other undertakings.”

3
Adopted by European Parliament and of the Council of 22 October 2008

4

 The same idea can be found in art. 4 of the Council Regulation 207/2009/EC4 about

Community Trademarks. According to the article, every sign capable of being represented

graphically and able to distinguishing the goods or services of an undertaking from another

one can be registered as a Community Trademark.

Therefore, clearly, trademarks definition cannot be limited to a particular graphical

sign: also others distinguish signs that meet the requirements provided by the law, like

smells, colours or shapes, can be registered as a trademark, and they constitute the category

of “non-traditional trademarks”.

The use of non-traditional trademarks started with the research of new distinguishable

signs for companies. Technology improvements and the arising of the digital age brought

new challenges to the markets, and the distinctive representation of products and brands

became more and more strategically important for the undertakings. Therefore, companies

started to seek for more creative and distinguishable elements to make their brands and

products unique around the world.

This concept can be explained better by the following sentence: “If you heard a

familiar, comforting sound associated with a particular kind of tea, would you be more likely

to choose it? How about the smell of freshly cut grass emanating from tennis balls –would

they make you a winner? Or mint-flavoured tennis balls for your dog –would fresher breath

not be welcome?”5.

The example given clearly shows that, drawings, words, logos, and names are not enough

anymore, and non-traditional trademarks have to get into the game.

4
Article 4 - Signs of which a Community trade mark may consist
A Community trade mark may consist of any signs capable of being represented graphically, particularly words,
including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that
such signs are capable of distinguishing the goods or services of one undertaking from those of other
undertakings.
5
WIPO magazine, Smell, Sound and Taste – Getting a sense of Non-Traditional Trademarks, February 2009,
http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html

5

Basically, non-traditional trademarks can be deemed as trademarks composed of colour,

smell, sound, shape - or something other than a name, word, phrase, logo, symbol, design,

image, or some other combination of those elements. As an example, here follows a non-

exhaustive list of the most typical forms of non-traditional trademarks:

Colour Trademarks: the application of the number of colours or one colour per se, in

the visible form on the products.

Smell Trademarks: the chemical formula of a particular smell which associates with

particular goods or services.

Sound Trademarks: the jingle, music or sound which may provide distinguishing to

the owner from competitors.

Taste Trademarks: the particular flavour and the recipe which may provide

distinguishing to the owner from competitors.

Shape Trademarks: also known as 3-Dimensional Trademarks; the types of the

trademarks, which is formed by a particular shape, three-dimensional representation of the

product or the architectural design.

3. SHAPE TRADEMARKS

3.1 Definition

As it was mentioned above, the representation and the advertisement of the products

are highly important for the owners of the brands as for the reputation of the companies. So,

differentiating their products or packaging from the competitors may increase market power

and reputation as well as influence the consumers for the future purchasing: if you are off the

opinion that the bottle of Cola-Cola or the package of the Hershey’s Chocolate are simply

just designs, you are totally wrong. Truly, as far as they are designs, they are also shape

trademarks.

6

 Shape Trademarks are the ones that give to the product itself a “unique

representation”. According to the 2008/95/EC Directive, shape trademarks may obtain

registration as long as they fulfill the requirements prescribed by the directive itself. Some

countries have already adopted a legal framework, allowing the registration of the shape

trademarks, but some others still have worries. As a common knowledge, the trademarks give

a protection of unlimited time scale and pure exclusive monopoly right. So, trademarks are

preferable in comparison to industrial designs, which give the owner a period of 25 years of

monopoly on the registered shape: that’s why most of the countries are feared to give

indefinite monopoly onto a shape. However, designs are easier to register when the shape of

the design is new, while more serious requirements are met in registering a shape trademark.

Thus, although the shape trademarks seem to have place in Directive and Regulation,

principally they hardly find a place in the market.

Within the European Union, the situation got much more fluid with the introduction

of the Community Trade Mark (regulation 207/2009/EC), and the subsequent pronunciations

of the CJEU.

First of all, for successfully register a shape CTM, there must be a graphical

representation of the shape, consisting of a photographical reproduction or a physical

reproduction on the trademark (art. 4). The representation must be “sufficiently clear, precise,

self-contained, easily accessible, intelligible, durable, and objective”.6

In addition, CJEU formulated rules against the registration of simple and common

geometrical figures: e.g., it cancelled the registration as a shape CTM for Henckel rectangular

dishwasher tablets.

Moreover, according to art. 4 of CTM directive, a shape CTM must be capable of

“distinguishing the goods or services of one undertaking from those other undertakings”

6
Sieckmann, C-273/2000

7

 3.2. Distinctiveness

As we can easily note, the “capable of distinguishing” and “distinctiveness”

requirements are clearly set forth also with reference to shape CTM. The requirement that a

shape trademark must be “distinctive” is often the weak point for CTM application.

Clearly, the distinctiveness of a shape must be assessed with reference to:

a) the goods o services for which the registration has been applied for;

b) the perception of the shape that the “relevant public” has.

The concept of relevant public has been analyzed several times by the CJEU, which defined

it as “the average consumers of the goods in question, who are reasonably well informed and

reasonably observant and circumspect”.7

The European Supreme Court also noticed that the amount of the attention that the

average consumer must pay in assessing the distinctiveness of a shape must be correlated

with the nature of the goods: for an every day’s life good, the requested level of awareness is

not as high as the level requested for other kind of goods. In the second situation, the level

needs to be naturally higher. Moreover, the Court found that the average consumer must be

able to distinguish the goods concerned from others “without conducting analytical or

comparative examination, or paying particular attention”8. Finally, in assessing the

distinctiveness of a shape, it is important to underline that the average consumer doesn’t pay

attention to the details of the shape, and so the distinctive character of a shape must be

recognizable with reference to the overall impression of the shape in itself.

The last argument about distinctiveness in shape trademarks is the “distinctiveness

acquired through use.” The most famous example is for sure the one related to the Coca-Cola

bottle: Coca-Cola used a particular shape for its bottles for a long time, that makes it clearly

7
Linde, C-53/01 – Henckel, C-456/01P
8
Henckel, C-218/01

8

distinctive in the market. So the shape in itself, even if it had not an intrinsic distinctive

character in itself, became distinctive to the average consumers with the constant use of it in

the market, and capable of being recognized as a trademark per se. So, as we pointed out

before, even if the requirement of the shape trademarks for assessing distinctiveness are

higher than traditional trademarks, the bottle of Coca-Cola was able to obtain the shape

trademark registration safely and easily, through constant use. However, other bottles were

not as lucky as Coca-Cola’s and, so far, many others bottle shapes registrations were rejected

by OHIM.

3.3. Absolute Ground for Refusal: art. 7(1)(e) of E.C. Council Regulation 207/2009

Art. 7(1) of the CTM Directive also provides a general and absolute ground of refusal: it

means that, if the requirements indicated in the article are not met, the registration of the

CTM must not be accepted, or it is susceptible to be declared invalid and cancelled.

According to art. 7(1), are not registrable:

e) Signs which consist exclusively of:

i. The shape which results from the nature of the goods themselves;

ii. The shape of goods which is necessary to obtain a technical result;

iii. The shape which gives substantial value to the goods

It is important to underline that art. 7(1)(e) only applies to shape trademarks, and not

to other signs seeking registration. Secondly, the specific ground for refusal set forth in art.

7(1)(e) cannot be overcome by showing that the sign has become distinctive: basically, this

absolute ground of refusal is not concerned with the question of distinctiveness.9 It follows

that the technical function and distinctiveness are two separate issues: if a shape falls under

9
F. Schulyok, The Exclusion from Protection of Functional Shapes Under the Trademark Law of the EU, Lund
University Faculty of Law, 2010

9

art.7(1)(e)(ii), it is unnecessary to investigate its distinctiveness.10 Regardless of how

distinctive a shape is, or has become, if it falls under art. 7(1)(e)(ii) it must be excluded from

registration.

If we take a look into the jurisprudential panorama, we’ll see that the standard about

registrability of shape trademarks under art. 7(1)(e) has been set by the ECJ case C-299/99,

Philips vs. Remington. In Philips, the Supreme European Court stated that the aim of art.

7(1)(e) is the public interest, and so a shape whose essential characteristic is to perform a

technical function may be freely used by all. So, those kind of shapes cannot be monopolized

by an undertaking because they was registered as a trademark. Moreover, according to

Philips, the absolute ground of refusal set by art. 7(1)(e) cannot be overcome by establishing

that there are other shapes that allow the same technical result to be obtained.11

Art. 7(1)(e) clearly shows the reluctance of the legislator towards the registration of shape

trademarks. In facts, while the UE legislator allowed the registration of shape trademarks in

the Directive and the Regulation, he expressly took the risk of granting an indefinite

monopoly onto the registered shape. So it will appear clear how art. 7(1)(e) has two intrinsic

functions: delimiting patent law from trademarks law, and ensure competition between

undertakings.

3.3.1 – Delimiting trademarks law from patent law

The more obvious idea that lies under art. 7(1)(e) is to merely delimitate trademark law

from patent law.12According to this approach, the main rationale of art. 7(1)(e) is the purpose

of refusing the registration of functional shapes, or shapes that gives a substantial value to the

10
J.C. Troussel, P. Van denBroecke, Is EuropeanCommunity Trademark law getting in goodshape?, 93, in The
Trademark Reporter (2003), at 1066-1071

11
VV. AA.,Non-Traditional Trademarks in Europe - Shape and Colour Trademarks - Common Issues with
Obtaining, Exploiting and Enforcing Rights, INTA, March 2005

12
This approach was taken by Advocate General Colomer in Philips vs. Remington, case C-299/99

10

good in itself, as a trademark, in order to prevent for a possible indefinite the extension of an

exclusive right (patent), which the legislator wanted limited in time. So, art. 7(1)(e) can be

seen as necessary in order to safeguard the balance of public interest between rewarding an

innovation, encouraging so technological development, and granting an exclusive right of

exploitation for a limited amount of time. This is, without any doubt, probably the most

important purpose that the legislator had in mind when the provision was drafted.

3.3.2 – Protection of competition

As we underlined before, the Philips13 pronunciation seems to put more emphasis on

preventing anti-competitive effects related to the abstract protection of functional shapes as

trademarks. The Court held that art. 7(1)(e) is intended to prevent one undertaking to

monopolize a technical solution or functional characteristic, which a user is likely to seek

also in products of the competitors. So, trademark law must not be an obstacle preventing

competitors from freely sale products incorporating such technical solutions or functional

characteristics: the rationale behind art. 7(1)(e)(ii), according to this opinion, is that a shape

that is necessary to perform a technical function, must remain free for all the undertakings to

use, preserving so the level of competition in the market. Individuals should not be allowed to

acquire exclusive trademarks rights related to technical solutions, and competitors should not

be limited by those exclusive rights in their freedom of choice between shapes whose

essential characteristic perform a technical function.14

13
ECJ case C-299/99, Philips vs. Remington
14
P. Cappuyns, The Shape Of Lego Brick Is Free For All To Use in Journal Of Intellectual Property Law &
Practice 2009, at 499-505

11

 4. MIXED TRADEMARKS: Between Distinctiveness and Technical Function

It is now useful to define if the considerations made above can be applied also to mixed

trademarks. Mixed trademarks can be defined as that particular sub-category of the family of

the shape trademarks, in which some essential features are functional, while others are not.

As mentioned before, Philips set out that a shape falls in the absolute ground of refusal

under Art. 7(1)(e)(ii) if its essential feature performs a technical function. But what happens

if just some features of the shape are functional, while others are not? A strict interpretation

of Philips would exclude mixed shapes form the scope of application of art. 7(1)(e)(ii). The

EUCJ had the opportunity to face this issue in Lego15, with reference to the registration as a

shape trademark of the ultra-famous (and became highly distinctive through a constant use)

red brick toy.

4.1. The Proceedings in Lego

Lego, a famous Danish toy manufacturer, filed a Community Trademark application on

1 April 1996 with the application no. 107 029 at OHIM for the registration of a three-

dimensional shaped red toy brick. Within two days of the CTM registration in 1999, Mega

Brands, a Toy manufacturer of the comparable product Mega Blocks, applied to OHIM in

order to obtain the cancellation of Lego’s trademark, invoking the absolute ground of refusal

set forth in art. 7(1)(e)(ii), on the base that the shape was not able to obtain registration, since

it contains functional features. Before OHIM, the application for the cancellation was

accepted and the trademark was invalidated. This decision was also confirmed by Grand

Board of Appeal of OHIM. Against Grand Board of Appeal of OHIM decision, LEGO

brought an action before the General Court against that decision. Then, once again the

decision with regard to the invalidation of the trademark was confirmed by General Court and

Lego brought an appeal before the Court of Justice against that judgment. However, the Court

15
Case t-270/06 and Case C-48/09P – Lego Juris A/S vs. OHIM and Mega Brands

12

once more decided against Lego, and dismissed the appeal.16

The ruling of the Court in Lego lies mainly on the interpretation that Court itself gave

of the terms exclusively and necessary, both contained in art. 7(1)(e)(ii).

4.2. Exclusively? The Essential Features of a Shape

If we look a little bit deeper at the wording of art. 7(1)(e)(ii), we will notice that,

surprisingly, it states that signs which consist exclusively of the shape of the good which is

“necessary to obtain a technical result” shall not be registered as a trademark: a literal

interpretation of the provision is surely too narrow, since that there are no shapes that consist

exclusively of functional parts, or at least, it would be enough to add a single small distinctive

element to the shape, in order to circumvent the provision, leaving the absolute ground of

refusal without any practical applicability, especially with reference with mixed trademarks.

The ECJ, in Philips, interpreted the provision in a different and more consistent way: it

said that the term “exclusively” should not be given an over-literal significance or rigid

interpretations, and so it must be interpreted as just covering the essential features of the

shape. In Philips, the essential features of the shape concerned - the Philips three-headed

shaver – were found to be only functional, and therefore the shape mark could not survived17.

So, in the Courts view, if the essential features of a shape are functional, art. 7(1)(e)(ii) will

apply, and the registration of the trademark must be rejected, or cancelled.

Anyway, the question about how to analyze a shape in order to identify which parts of

it must be seen as essential, remained unanswered in Philips.

The General Court faced the problem in Lego18. The argumentation made by the GC

was not upheld by the EUCJ in the appeal19 against the GC decision. Basically, the question

16
S. Mosca, Advocate General, LEGO brock cannot be registered as a Trademark, at www.europolitics.info
17
H. Newton, M. Shillito, How To Protect 3D Shapes In Europe in Managing Intellectual Property Feb. 2009,
at 36-41
18
Case t-270/06 – Lego Juris vs. OHIM – Mega Brands
19
Case C-48/09P – Lego Juris vs. OHIM - Mega Brand

13

was: who decides what are the essential features in the shape? Lego in its defense argued that

the essential features of a shape shall be determined from the point of view of the average

consumer. According to this view, clearly, the elements that from the point of view of the

consumer do not necessarily coincide with those that are “essential” in the contest of a

functional analysis. So, in the end, from the point of view of the average consumer,

“essential” is synonymous with distinctive, in particular with that dominant and distinctive

element, which must be assessed from the perspective of an average consumer which is

reasonably well informed, observant and circumspect.

The Court did not follow Lego’s argumentation: on contrary, it confirmed that it should

not be left to the consumers to determine what are the essential characteristics of a shape in

the context of a functionality analysis. In particular, the Court said that “the perception of the

target consumer is not relevant to the analysis of the functionality of the essential

characteristic of a shape. The target consumer may not have the technical knowledge

necessary to assess the essential characteristics of a shape and therefore certain

characteristics may be essential from his point of view even though they are not essential in

the context of an analysis of functionality and vice versa. Accordingly, it must be held that the

essential characteristics of a shape must be determined objectively for the purposes of

applying art. 7(1)(e)(ii), on the basis of his graphical representation and any descriptions

filed at the time of the application for trade mark”20. Hence, the Court concluded that the

essential characteristics of a shape must be identified objectively, in the light of the purpose

of assessing their functionality: basically, the relevant point of view in assessing the essential

features of a shape must be the one of an expert.

Some authors21 criticize the point of view of the European Court. In fact, it do not take

20
Case T-270/06 - Lego Juris vs. OHIM – Mega Brands, paragraph 70
21
F. Schulyok, The Exclusion from Protection of Functional Shapes Under the Trademark Law of the EU, Lund
University Faculty of Law, 2010, p. 24 – L. Bently and B. Sherman, Intellectual Property Law (2009)

14

into account the scope of the protection conferred by trademarks. Trademarks, as we pointed

out in the introduction, are used by the consumers in order to identify the goods and services

provided by one company from others goods or services provided by another one.22 The

question of infringement of a Trademark is decided by taking the point of view of the

consumer also with regards to shapes, asking him if there are similarities between two shapes

that can conduct to a confusion. So, the consumer’s view is the relevant one in delimiting the

scope of protection under trademark law: the use of characteristics that consumers do not find

as essential or dominant are, from this point of view, not covered by trademarks protection,

and so they can be freely used by others competitors, because their usage do not lead to a

confusingly similar overall impression. Thus, shapes whose functional features are not

perceived as essential form the consumer’s point of view in assessing similarity with another

shape, can be registered. In a more consistent view of the issue with the scope of the

trademark protection, the relevant point of view should be the consumer’s one, and not the

expert’s one, like Lego.

Moreover, as a consequence of that reasoning, EUCJ got deeper in the analysis of the

extent of the term exclusively, in particular with reference to the mixed shapes. The Court,

basing its convincement of the idea that the “essential features” must be assessed by an

expert, rather than a relevant consumer, didn’t recognize the aesthetical characteristics of the

Lego brick as an “essential feature”. As a consequence, the Court stated that the presence of

one minor arbitrary element in the shape does not alter the conclusion that the sign consists

exclusively of the shape of goods which is necessary to obtain a technical result, being the

non-essential characteristic irrelevant in the context. But clearly, from the mixed trademarks

perspective, in deciding what are the essential characteristic of a shape, the minor arbitrary

elements and the non-functional decorative or imaginative elements play an important role in

22
Page 4.

15

the shape, being difficult to understand how these can be separated entirely from the

functional elements in the consumer perception.

4.3 Necessary? The Technical Function of a Shape

A strict interpretation of the term necessary used in art. 7(1)(e)(ii), meaning that if the

technical result can be achieved also by using other kind of shapes, would narrow

significantly the scope of art. 7(1)(e)(ii). The issue is particularly important with reference to

the importance of alternative shapes. In other words, it is possible for an undertaking seeking

protection for a shape trademarks to demonstrate that it not falls on the absolute ground of

refusal stated by art. 7(1)(e)(ii), by showing that there are other shapes that can achieve the

same result? The question remained unsolved in Philips.

In Lego the EUCJ found that the existence of alternative shapes, e.g. with different

dimension or design, but capable of achieving the same technical results, doesn’t mean that

registering the shape as a trademark have no consequence on availability, for other operators,

on the technical solution embodied. In other words, The Court in Lego preferred a broad

interpretation of the provision23. The Court held that there is nothing in the wording of the

legislation that would indicate that the ground for refusal stated in art. 7(1)(e)(ii) can be

overcome by showing that there are alternative shapes that can achieve the same technical

result. The interpretation given is fully consistent with the policy interests describe in the

paragraph above, dedicated to the description of art. 7(1)(e)(ii)24: the absolute ground for

refusal at issue is not just to give undertakings the access to a shape that performs a technical

solution, but also to grant them the freedom to choice between different shapes. Moreover,

23
“...The espression “necessary to obtain a technical result” does not mean that the absolute ground for
refusal applies only if the shape at issue is the only one which could achieve the intended result... the term
“necessary” means that the shape is required to obtain a technical result, even if that result can be achieved by
other shapes...”
24
P. Cappuyns, The Shape Of Lego Brick Is Free For All To Use in Journal Of Intellectual Property Law &
Practice 2009, at 499-505

16

the Court found that, in Lego, the shape to be registered as a trademark was the preferable

one, because it would be difficult for the competitors to put on the market shapes constituting

a real alternative, resulting non attractive to the consumer from a functional perspective.

However, even if it is irrelevant the existence of other shape that can achieve the same

technical result, according to the Court case law (and obviously, Lego) there still must be a

causal link between the shape and the technical result to be achieved. According to this, we

can ask ourselves, in particular with reference to mixed trademarks: it is possible to claim a

shape out of the application of art. 7(1)(e)(ii) demonstrating that changing to some extent the

shape, the technical result doesn’t change? The Court, both in Lego and Philips, didn’t deny

the possibility of avoiding the absolute ground for refusal just highlighted , but it stated that

the shape must pass the random change test25: only if the shape continues to perform the

same technical function after a random change of a part of its shape, leaving it unaffected, the

application of art. 7(1)(e)(ii) can be avoided. And, both in Lego and in Philips, the shapes

didn’t pass the random change test.

Anyway, it would have been difficult for Lego to argue and rebate on the ground of

functionality, because of the prior valid and expired patent on the shape of the red brick. Even

though is still true that an asset can be protected under simultaneous IP rights, this doesn’t

matter regarding the delimitation between patent law and trademark law26, and specifically

with reference to the question of functionality. The Court found out that a prior patent in a

strong evidence of the functionality of the shape, and so it constitutes a powerful presumption

that the essential characteristic of the shape performs a technical function. Under those

statements, in the light of the case law, it is correct to conclude that the existence of a prior

expired patent upon the shape must be seen as a proof of functionality. Only if the shape is

25
For a more detail explanation, refer to F. Schulyok, The Exclusion from Protection of Functional Shapes
Under the Trademark Law of the EU, Lund University Faculty of Law, 2010
26
As already noted under chapter 3.1.1

17

not completely similar with the one which was protected with the patent, the body in charge

of examine the registrability as a trademark must examine the degree of similarity between

the two shapes.

5. CONCLUSIONS: the same standard for Shape and Mixed Trademarks

In conclusion, we can note that the present case law did not recognize a different status

for mixed trademarks, applying the same standards individuated for the bigger family of

shape trademarks: the Court found out that there are no objective reasons for treating them

differently. This approach, surely very strict, excludes from registrability every shape that

incorporate a technical function, regardless of the existence in it of some aesthetic or

distinctive features, or of a distinctiveness acquired through use.

So, in determining if a shape seeking registration as a trademark falls under the absolute

ground for refusal of art. 7(1)(e)(ii), the competent body must carry out a three-step-test

outlined throughout this paper:

First step – Essential Features - The essential features of the shape must be identified,

without any question of functionality. The purpose is just to identify the most important and

relevant part of the shape. Case law pointed out that this analysis must be carried out by an

expert, while other authors believe that, according to the scope of protection of trademarks, it

has to be made by relevant consumers.

Second step – Technical Function – The second step is concerned with assessing the

functionality of the shape. The existence of alternative shape is irrelevant. The fact that an

existing patent protection on the shape was issued constitutes a presumption of functionality,

if the shapes are identical. If not, an expert judgment is necessary.

Third Step–Distinctiveness – If the above obstacles may be removed, it is necessary to

determine if the trade mark has a distinctive character. At this step, overall impression and

the distinctive character of the shape are crucial.

18

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