Too Pretty to Protect? - Trade Mark Law and the Enigma of Aesthetic Functionality (Max Planck Institute for Intellectual Property & Competition Law Research Paper, No. 11-16), 2011, 22
Under European trade mark law, ‘functional’ signs, i.e. signs exclusively consisting of shapes which result from the nature of the product, are necessary to achieve a technical result, or give substantial value to the goods, are barred from trade mark protection with absolute and permanent effect, without the possibility to establish acquired distinctiveness. While the rule may appear sound as such, its application in practice is problematic, in particular as regards the third ground for exclusion, which is often referred to as ‘aesthetic functionality’: the dangerous implications of that rule for particularly attractive design have become obvious in the recent decision by the General Court, T-508/08 – Bang & Olufsen. The article traces the origins of that rule in US case law and screens its application in Europe. It is argued that the original aim of the functionality doctrine in its various forms, namely to foster and maintain efficient competition, has been lost out of sight. Instead of embarking on an analysis of competitive concerns, courts tend to focus their attention on elements of largely accidental character, like the attractiveness of shapes in the early stage of marketing. Against that, the position is endorsed that it should not be precluded forever that a shape, initially attracting customers by its pleasant appearance, will become a valid sign at a later stage. Instead of focusing on how the public, at a given point in time, perceives and evaluates a certain shape, the crucial test should consist of an analysis of the competitive potential of the shape at stake, considering to what extent its assignment to one particular right holder would be liable to impede, or even exclude, efficient and meaningful competition.
