The need to keep technical subject matter available Prof. Luigi Mansani University of Parma Conference "Trademark Law and the Public Interest in Keeping Signs Available" Trademak Law Institute, Leiden, March 2009

Secondary meaning: Philips (§§ 75-77) A sign which is refused registration under Article 3(1)(e) of the Directive can never acquire a distinctive character for the purposes of Article 3(3) by the use made of it. Article 3(1)(e) thus concerns certain signs which are not such as to constitute trade marks and is a preliminary obstacle liable to prevent a sign consisting exclusively of the shape of a product from being registrable. If any one of the criteria listed in Article 3(1)(e) is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark. The various grounds for refusal of registration listed in Article 3 of the Directive must be interpreted in the light of the public interest underlying each of them

Public Interest: Philips (§§ 79-80) As regards, in particular, signs consisting exclusively of the shape of the product necessary to obtain a technical result, listed in Article 3(1)(e), second indent, of the Directive, that provision is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark 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 in their product. As Article 3(1)(e) of the Directive pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function and were chosen to fulfil that function may be freely used by all, that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

Signs which consist exclusively of the shape necessary to obtain a technical result Lego (§ 38) The word ‘exclusively’ must be read in the light of the expression ‘essential characteristics which perform a technical function’, used in Philips. It is apparent from that expression that the addition of non-essential characteristics having no technical function does not prevent a shape from being caught by that absolute ground of refusal if all the essential characteristics of that shape perform such a function. Accordingly, the Grand Board of Appeal was right to analyse the functionality of the shape at issue by reference to the characteristics which it considered to be essential

Shape necessary to obtain a technical result Lego (§§ 39-42) quoting Philips (§§ 81-83) The expression ‘necessary to obtain a technical result’, does not mean that absolute ground for refusal applies only if the shape at issue is the only one which could achieve the intended result. The Court (Philips) held, at paragraph 81, that ‘[the existence] of other shapes which could achieve the same technical result can[not] overcome the ground for refusal’ and, at paragraph 83, that ‘registration of a sign consisting of [the] shape [in question is precluded], even if that technical result can be achieved by other shapes’. Accordingly, in order for that absolute ground for refusal to apply, it is sufficient that the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result, and are therefore attributable to the technical result. Article 3(1)(e) of the Directive ‘pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function … may be freely used by all’. That aim does not therefore relate solely to the technical solution incorporated in such a shape, but to the shape and its essential characteristics themselves.

Shape necessary (cont'd) Lego (§ 43) Article 7(1)(e)(ii) of Regulation No 40/04 precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution.

Comments Necessity and Equivalents Patent protection ensures exclusivity on the claimed technical solutions and on equivalents. If a technical solution falls in public domain, why should the patentee be entitled to continue to have exclusive rights on the claimed solution? Why should competitors be forced to use alternative solutions? If the public interest pursued by the Directive is that a shape which performs a technical function may be freely used by all, this interest would be impaired by granting the competitor only a limited choice.

Comments The absolute ground for refusal can apply also to signs which do not consist exclusively in a shape performing a technical function It is sufficient that the "essential characteristics" of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result, and are therefore attributable to the technical result. The presence of non-essential characteristics having no technical function does not prevent a shape from being caught by that absolute ground of refusal (even if these characteristics have a distinctive character?)

The aim of the registration is not irrelevant Normally protection of a shape is not claimed. Very often the shape is simply dictated by the nature of the product itself and its peculiar features, if any, are not entitled to receive any exclusive protection. Products are distinguished from the competitors' ones through normal bi-dimensional trade marks. In 2007, of about 500,000 existing WIPO trade mark registrations, only 526 were 3D trade marks. If exclusive protection is sought, the first check is whether the functional/utility value can be protected, than the design/aesthetic value. If these protections are not available, one may seek to protect or build a distinctive/goodwill value.

Protection of distinctiveness It is unlikely that if there is the possibility to differentiate a product, this is not exploited. On what, it depends on the nature of the product. If it is a technical product, or a product whose shape shall include features dictated by technical or functional reasons, differentiation can also be sought. Marchi di forma (shape) o marchi deformi (deformed)? Slavish imitation. Not registered 3D trademarks. Distinctive features are protected The relevance of previous patent protection in the assessment of the public interest in the Philips and Lego cases. Trademark registration seen as an attempt to extend exclusive rights after the expiring date of a patent. Differences between Philips and Lego

Patent protection never claimed The product with a shape different from competing products is not imitated although the uniqueness of the shape cannot be protected The shape has acquired secondary meaning and can be protected against slavish imitation Why not trademark registration? The product's shape is a combination of obvious technical features and distinctive elements (no "capricious additions") The shape can be registered as trademark as it does not cconsist exclusively of the shape necessary to obtain a technical result According to general rules, only the distinctive elements will be protected

Italian approach Slavish imitation and due variations Examples of shapes which cannot be protected a round shape with spiral concentric grooves for an abrasive disc; a wavy edge for adhesive labels Examples of shapes which can be protected a concentric groove texture around a cooking pot Lego bricks