Technical Functionality in European Trade Mark Law

In the EU signs which are necessary to achieve a technical result cannot be registered as trade marks. Known as technical functionality, this restriction plays 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 access to in order to 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. Without a functionality exclusion, the risk is that a trade mark registration would deliver exclusive rights in how a product works into the hands of a single undertaking and for an unlimited duration. Functionality is also the point at which trade mark law meets with patent, copyright and design law with their finite terms of protection and their different conceptions of what should be within the public domain. Yet, despite its key role in the European trade mark system, the functionality exclusion has been subject to little analysis. In this article, I identify the policies behind technical functionality in particular, and consider how these have influenced its scope. I argue that these policies are being undermined because a mark will only be excluded from registration (or subject to an invalidity action) if it consists exclusively of a shape, or another characteristic, which is necessary to achieve a technical result. I argue that the term ‘exclusively’ has been interpreted excessively widely to allow too many ‘hybrid’ signs (those which combine functional and non-functional features) to escape the functionality exclusion and proceed to registration. Moreover, I identify how the dangers of this approach are 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 the functional feature/s alone, without the non-functional characteristic that secured its protection. Consequently, I make a series of suggestions as to how a different judicial approach can restore the protection of competition and the wider public domain to the centre of the functionality doctrine