IP, IT & Life Sciences

Functional designs and trademarks – limits to the scope of protection

To avoid protection of technical solutions by trademark and design rights, the relevant legal acts stipulate exemptions from protection/protectability for certain shapes/features. The most important provisions are presented here.


Tech­ni­cal fea­tures of a prod­uct may be pro­tect­ed by a patent or util­i­ty mod­el – if they are new and inno­v­a­tive. But the peri­od of pro­tec­tion is very lim­it­ed. As a prod­uct may also be pro­tect­ed as a design or trade­mark, which enjoys a longer peri­od of pro­tec­tion (for trade­marks, basi­cal­ly unlim­it­ed), own­ers often reg­is­ter designs or trade­marks, hop­ing that they also pro­long their monop­oly in the tech­ni­cal fea­tures for­mer­ly pro­tect­ed by a patent or util­i­ty mod­el or obtain monop­o­lies over tech­ni­cal solu­tions with­out meet­ing the rel­a­tive­ly strin­gent con­di­tions laid down in patent law. How­ev­er, as this would coun­ter­act the under­ly­ing idea of patent pro­tec­tion (lim­it­ed peri­od of exclu­siv­i­ty in exchange for the pub­lic dis­clo­sure of an inven­tion), the rel­e­vant pro­vi­sions of the Trade­mark Direc­tive (TMD), Com­mu­ni­ty Trade­mark Reg­u­la­tion (CTMR), Design Direc­tive (DD) and Com­mu­ni­ty Design Reg­u­la­tion (CDR)1 con­tain pro­vi­sions to avoid such pro­lon­ga­tion of exclu­siv­i­ty in tech­ni­cal fea­tures.

Technical features and trademark protection

Art 7 (1) (e) (ii) CTMR and Art 3 (1) (e) (ii) TMD state that signs con­sist­ing exclu­sive­ly of the shape of goods nec­es­sary to obtain a tech­ni­cal result may not be reg­is­tered. The CJEU has pro­vid­ed guid­ance on this pro­vi­sion in two deci­sions2, which may be sum­marised as fol­lows:

  • The ratio­nale for the exclu­sion of func­tion­al trade­marks is to pre­clude the reg­is­tra­tion of shapes whose essen­tial char­ac­ter­is­tics per­form a tech­ni­cal func­tion, with the result that the exclu­siv­i­ty inher­ent in the trade­mark right would lim­it the pos­si­bil­i­ty of com­peti­tors sup­ply­ing a prod­uct incor­po­rat­ing such a func­tion, or at least lim­it their free­dom of choice in regard to the tech­ni­cal solu­tion they wish to adopt in order to incor­po­rate such a func­tion into their prod­uct.
  • Func­tion­al fea­tures are barred from trade­mark pro­tec­tion even if the tech­ni­cal result can be achieved by oth­er shapes.
  • The essen­tial char­ac­ter­is­tics of the sign are deci­sive, and whether such char­ac­ter­is­tics per­form a tech­ni­cal func­tion.

Notwith­stand­ing these valu­able guide­lines, there is still room for inter­pre­ta­tion (and there­fore room for argu­ments in pro­ceed­ings). For exam­ple, it is often dif­fi­cult to assess which char­ac­ter­is­tics will be con­sid­ered deci­sive in a cer­tain case. The CJEU denied pro­tec­tion of a red Lego brick (in regard to con­struc­tion toys) on the basis of Art 7 (1)(e) (ii) CTMR, not con­sid­er­ing the red colour to be an essen­tial char­ac­ter­is­tic, where­as the Aus­tri­an Supreme Court3 recent­ly held that trans­paren­cy of a pack­ag­ing (for cer­tain sweets) is an essen­tial ele­ment that does not serve a tech­ni­cal func­tion (stat­ing in the same sen­tence that it allows per­cep­tion of the con­tents of the pack­ag­ing!).

Technical features and design protection

While, the CJEU has pro­vid­ed guid­ance on the pro­vi­sions for exclu­sion of pro­tec­tion due to tech­ni­cal func­tion­al­i­ty in regard to trade­marks, there is no rel­e­vant CJEU case law on Art 8 (1) CDR and Art 7 (1) DD, which state that a com­mu­ni­ty design / design right is not present in fea­tures of appear­ance of a prod­uct that are sole­ly dic­tat­ed by its tech­ni­cal func­tion.

This lack of CJEU case law is all the more regret­table, as these pro­vi­sions are con­strued dif­fer­ent­ly by the courts of the mem­ber states (and the Office for Har­mon­i­sa­tion in the Inter­nal Mar­ket). One view holds that the tech­ni­cal neces­si­ty excep­tion applies only if the tech­ni­cal func­tion can­not be achieved by any oth­er con­fig­u­ra­tion. If the design­er has a choice between two or more con­fig­u­ra­tions, the appear­ance of the prod­uct is not sole­ly dic­tat­ed by its tech­ni­cal func­tion.

That the­o­ry – known as the mul­ti­plic­i­ty-of-forms the­o­ry – is fol­lowed by Ger­man courts,4 was fol­lowed by the French courts and has been adopt­ed by Span­ish courts5. The mul­ti­plic­i­ty-of-forms the­o­ry has also been adopt­ed,6 and quick­ly reject­ed again,7 by courts in the UK, which like OHIM (accord­ing to its “Man­u­al con­cern­ing the Exam­i­na­tion of Design Inva­lid­i­ty Appli­ca­tions” [1.6.2012]) now ask whether the need to achieve the product’s tech­ni­cal func­tion was the only rel­e­vant fac­tor when the fea­ture in ques­tion was select­ed.

As these diver­gences in court / IP author­i­ties’ prac­tices may lead to dif­fer­ent scopes of pro­tec­tion in dif­fer­ent mem­ber states, a clar­i­fy­ing deci­sion of the CJEU is desir­able.


The rel­e­vant EU acts pre­vent trade­mark and design rights from being used to obtain monop­o­lies over tech­ni­cal solu­tions with­out meet­ing the rel­a­tive­ly strin­gent con­di­tions laid down in patent law.

While there are guide­lines of the CJEU for such trade­mark pro­vi­sions, the CJEU has not answered the ques­tion of how the cor­re­spond­ing pro­vi­sions on design rights are to be inter­pret­ed.

Trade­marks and Design rights may be pow­er­ful tools, but own­ers of such rights should be aware of the scope of pro­tec­tion con­ferred by their rights – or it should be brought to their atten­tion, in par­tic­u­lar to avoid unpleas­ant sur­pris­es in cas­es of col­li­sion.

This lack of CJEU case law is all the more regrettable, as these provisions are construed differently by the courts of the member states.

Direc­tive 2008/95/EC, Reg­u­la­tion 207/2009/EC, Direc­tive 98/71/EC, Reg­u­la­tion 6/2002/EC.
CJEU 18 June 2002, C‑299/99, Konin­klijke Philips Elec­tron­ics v Rem­ing­ton Con­sumer Prod­ucts; CJEU 14 Sep­tem­ber 2010, C‑48/09 P, Lego Juris A/S v OHIM and Mega Brands, Inc.
OGH 11 May 2012, 4 Ob 61/12t.
Eg the LG (9.9.2011, 14c O 19411, GRUR-RR 2011, 361) and OLG Düs­sel­dorf (31.1.2012, I‑20 U 17511, GRUR-RR 2012, 200) con­sid­ered none of the rel­e­vant fea­tures of a Com­mu­ni­ty design (for an iPad) as sole­ly dic­tat­ed by a tech­ni­cal func­tion, as there were design alter­na­tives for each fea­ture.
See OHIM – Board of Appeal 22 Octo­ber 2009, R 690÷2007−3, para 28, 29.
See Hawa Inter­na­tion­al Ltd v Azure Designs Ltd [2006] EWCA Civ 1285 (28.7.2006).
See Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat) (29.7.2010).

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schoenherr attorneys at law / www.schoenherr.eu