1. The functionality theory: another potential burden for scent marks.
Raising the official role of the human senses to a new level.
Dr Patricia Covarrubia
*Paper presented at The Society of Legal Scholars, Edinburg, September 2014

2. Back to basis...
Art 4 CTMR “any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
Article 15(1) TRIPS unrestricted nature of signs that may constitute TM.
Also...to assess if sign is functional
If so, it may also fail the test of distinctiveness;
functionality theory goes further than a distinctiveness feature.

3. The functionality theory - rationale
Relevant: utilitarian articles - mechanical features.
Concerns: freedom of others to compete (monopoly) -- reducing the number of substitutable alternatives available to competitors.
Public policy: prevents a perpetual monopoly over a product feature - ensuring effective competition.

4. Should the theory apply to other signs?
Currently...inconsistent with the purpose.
TM does not exist to reward manufacturers’ innovation.
A reminder of the policy...to leave the functional know-how to fall in the public domain.
Why the fuss?
functional mark is examined towards the functionality policy (Art 7(1)(e) CTMR (rather than Art 7(1)(b))
if caught, it cannot be saved by the proviso (Article 7(3) CTMR)
functionality is an objective quality; distinctiveness is a subjective quality.

5. Why does the law discriminate?
CJEU brought attention to the “need to develop a wider theory of functionality that will cover not only shapes, but other functional characteristics of a product as well”(Sieckmann and Libertel ).
Currently... approach of the law is narrow by “targeting exclusively the functional characteristics of shapes” - leaves aside other types of marks that may have functional features (S Maniatis).

6. Article 7(1) (e) CTMR - functionality doctrine
Note: term is not used in any EU legislation.
Three objections
only one refers to functionality as such i.e. ‘technical result’.
‘nature of the goods themselves’ – does it belong to any functionality doctrine at all?;
gives ‘substantial value to the goods’ - not understood as functional in the EU but is treated as such in the US – aesthetic functionality

7. Nature of the Goods Themselves
Natural characteristics/qualities.
Overlap with lack of distinctiveness.
Prospective scent marks:
the ‘scent of strawberry’ for strawberries
the ‘scent of freshly cut grass’ for lawnmowers
the ‘smell of play-doh’ for modelling compound
Has the UK applied this to scent marks?
the UK national office denied TM registration to Channel No 5 for the perfume’s scent (Erin Reimer)

8. Necessary to Obtain a Technical Result
Shapes motivated by/are the result of technical considerations - functional task.
Unregistrable if the essential features of that shape are attributable only to the technical result.
Phillips “...an obstacle”.
Lego... policy does not relate exclusively to the technical solution incorporated in such a shape, but to the shape...
The shape has no other purpose other than achieving a technical result.

9. Scent marks with functional tasks...
The manner in which a flavour is used/applied to a product and how it will function, will determine if the scent is functional.
HOTEL HILTON in Las Vegas: the smell ‘Odorant 1’ used in a slot machine pit.
BODYWISE odorant which makes debt collection more efficient.
Scent of lavender in a French pizza shop increased sales and longer customer stays.
Pharmaceutical industry: physiological and psychological effects (Elli Lilly + Organon)

10. Does technical function included ornamental function?
a triangulated shape of chocolate shavings -- enhancing the appearance of it (ornament was their function Luijckx BV v ECC).
Other cases regarding ornamentation may be dealt under the proviso ‘adding value to the goods’.

11. Gives Substantial Value to the Goods
Nothing to do with the commercial value of the goods.
Refers to aesthetic value i.e. ‘appeal to the eye’.
should be limited to when the pleasing feature is the primary function.
“has the potential to determine to a large extent the consumer’s behaviour to buy the product” - (Bang & Olufsen)
TM owners spend large quantity of money on trying to dress their products as to encourage consumers to buy them.
A problem in the making for scent marks...
by nature, they are seen as aesthetic embellishments.
NOTE: a product’s aesthetic feature may be utilitarian - accomplishing a technical function.

12. Conclusion...
Functionality will prove to be the ultimate obstacle to TM protection for scent marks.
This is so because:
aromatherapy and fragrances ‘are no longer aesthetic, they are functional’ (C Classen).
senses’ used in advertising campaigns do ‘provide aesthetic pleasure, excitement, beauty, and satisfaction’ (B Schmitt).