Shape dictated by technical function

The shape dictated by technical function is the absolute ground for refusal that excludes from trade mark protection a sign consisting exclusively of the shape, or another characteristic, of the goods which is necessary to obtain a technical result. It is provided for in Article L. 711-2 of the French Intellectual Property Code, which transposes Article 4 of Directive (EU) 2015/2436, and in Article 7 of Regulation (EU) 2017/1001, alongside the related exclusions of the shape resulting from the nature of the goods themselves and of the shape giving substantial value to the goods. This ground can never be overcome through use.

Rationale of the exclusion

Trade mark law confers a right that is renewable indefinitely, whereas the patent protects a technical solution for twenty years at most and the design an appearance for twenty-five years at most. The exclusion prevents an operator from obtaining, through a trade mark, a perpetual monopoly over a technical solution or over functional characteristics that competitors must be free to take up once the patent has expired.

Assessment of functionality

The office or the court first identifies the essential characteristics of the sign, that is, its most important elements, then ascertains whether those characteristics all perform a technical function of the goods. The Court of Justice holds that the exclusion applies even if the same technical result can be achieved by other shapes, the existence of alternative solutions not being sufficient to rule out functionality. The existence of an earlier patent describing the shape as the solution to a technical problem is a strong indication. By contrast, the presence of a significant ornamental or fanciful element with no technical function takes the sign outside the exclusion, the word “exclusively” having to be construed strictly. Since the 2015 reform, the exclusion also covers any “other characteristic” of the goods, which allows it to be applied to a colour, a pattern or a sound dictated by technical considerations.

Related exclusions and litigation

The shape resulting from the nature of the goods themselves covers shapes inherent in the generic function of the goods, and the shape giving substantial value to the goods covers those whose aesthetic or functional characteristics largely determine the purchasing decision, the public interest precluding here the trade mark from taking over from an expired design. In litigation, these exclusions are the usual defence against a three-dimensional mark relied on in support of an infringement action, by way of a counterclaim for invalidity before the Judicial Court, which is not subject to any time limit. The owner whose mark is struck down may still bring an action for unfair competition if it establishes a fault distinct from the mere copying of the shape.

Key points

A shape, or any other characteristic, whose essential elements perform a technical function cannot be protected by a trade mark, even if other shapes would achieve the same result, and this exclusion cannot be overcome through use. It preserves the freedom to take up technical solutions that have fallen into the public domain. Before filing the shape of a product, check that its essential characteristics are not described in a patent as a technical solution, and favour design protection for the appearance.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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