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 with out meeting the relatively stringent conditions laid down in patent law. How ever, 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 decisions,2 which may be summarised as follows:

  • The rationale for the exclusion of functional trademarks is to preclude the registration of shapes whose essential characteristics per form 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 per form a technical function.

Notwithstanding these valuable guide lines, there is still room for interpretation (and there fore 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 con tents 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 regret table, 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 can not 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 courts.5 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 pre vent trademark and design rights from being used to obtain monopolies over technical solutions with out meeting the relatively stringent conditions laid down in patent law.

While there are guide lines 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.


1. Directive 2008/95/EC, Regulation 207/2009/EC, Directive 98/71/EC, Regulation 6/2002/EC.

2. 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.

4. Eg the LG (9.9.2011, 14c O 194/11, GRUR-RR 2011, 361) and OLG Düsseldorf (31.1.2012, I-20 U 175/11, 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 alter natives for each feature.

5. See OHIM – Board of Appeal 22 October 2009, R 690÷2007−3, para 28, 29.

6. See Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285 (28.7.2006).

7. See Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat) (29.7.2010).

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