Shape Marks in the EU: The Technical Function Trap

The European Union Trade Mark system allows for the registration of three-dimensional shapes as trade marks. This provides businesses with a powerful way to protect the ""look and feel"" of their products — a unique perfume bottle, a distinctive candy shape, or an iconic product silhouette. However, this area of law is governed by one of the most unforgiving rules in the EUTMR: Article 7(1)(e), which permanently prohibits the registration of shapes that perform a technical function.

The Registrability of 3D Marks

To be registered as a shape mark, a sign must be capable of distinguishing the products of one company from those of another. While traditional word marks are easily recognised as identifiers, shapes are often perceived by consumers as purely aesthetic or functional.

To overcome this ""lack of inherent distinctiveness,"" many companies rely on extensive use under Article 7(3). But this safety mechanism is completely unavailable if the shape falls into the technical function trap.

The Fatal Refusal: Article 7(1)(e)

Article 7(1)(e) EUTMR lists three categories of shapes that can never be registered:

• Shapes that result from the nature of the goods themselves.
• Shapes necessary to obtain a technical result.
• Shapes that give substantial value to the goods.

If a shape falls within any one of these categories, it is a fatal refusal. Unlike other absolute grounds, a functional shape can never acquire distinctiveness through use, no matter how famous it becomes.

The Technical Function Exclusion Explained

The rationale behind this exclusion is to prevent companies from using trade mark law to bypass the limitations of patent law. Patents protect technical inventions for a limited period (usually 20 years), after which the invention enters the public domain.

If a company could trade mark a functional shape, they would effectively own a permanent monopoly on that technical solution, stifling competition and innovation. Article 7(1)(e) ensures that trade mark law cannot be used to circumvent the expiry of patent rights.

Landmark Case: The Philips Shaver

A pivotal case involved Philips' iconic three-headed rotary shaver. Philips attempted to trade mark the triangular arrangement of the three shaving heads. The court ruled that the shape was chosen solely because it achieved a specific technical result — a better shave.

Even though the public recognised the shape as a ""Philips"" product, it could not be registered as a trade mark because it would prevent other companies from using that efficient triangular layout for their own shavers.

Case Study: The Lego Brick vs. The Lego Minifigure

The history of Lego's legal battles provides the clearest distinction in shape mark law:

The Lego Brick: Lego attempted to trade mark the 3D shape of its classic red brick. The court refused the mark because every element — the studs on top, the tubes underneath, the wall thickness — was necessary for the technical result of the bricks interlocking. All essential characteristics were functional, and the mark was excluded.

The Lego Minifigure: In a 2023 decision, the court confirmed the validity of the Lego Minifigure as a trade mark. While the figure has functional parts (like hook hands and holes in the feet for assembly), its ""essential characteristics"" — the cylindrical head, trapezoidal torso, and human-like proportions — were deemed to be ""decorative and imaginative"" rather than purely technical. The creative expression outweighed the functional elements.

Identifying ""Essential Characteristics""

The test for functionality begins by identifying the ""essential characteristics"" of the shape — the elements that the consumer would notice first. Once identified, the EUIPO assesses whether all of these characteristics are necessary to obtain a technical result.

If even one major feature of the shape is decorative or arbitrary, the mark may be registrable. However, if the ""decorative"" elements are minor or non-essential, they will not save a fundamentally functional shape.

The Public Interest in Competition

The courts have emphasised that Article 7(1)(e) is intended to preserve competition. If a shape is the best or only way to achieve a technical goal, it must remain free for everyone to use.

Importantly, the availability of ""alternative shapes"" that can achieve the same result does not help the applicant. If the proposed shape itself is functional, it is barred — regardless of whether competitors have other design options.

Strategic Design Considerations for 3D Marks

To successfully register a shape mark, designers should incorporate ""capricious"" or purely aesthetic additions that have no technical purpose. For example, a bottle for a cleaning product can have a functional grip, but if the overall silhouette includes distinctive, non-functional curves or ridges, it is much more likely to be accepted.

Key strategic considerations include:

• Assess functionality first: Before filing, critically evaluate whether the shape's essential features serve a technical purpose.
• Do not rely on acquired distinctiveness: Unlike descriptive word marks, shape marks refused under Article 7(1)(e) cannot be saved through evidence of use. The refusal is permanent.
• Consider alternative IP protection: If a shape is functional, patent or registered design protection may be more appropriate — though these rights eventually expire.
• Check for expired patents: The existence of a prior or expired patent covering the same shape is a strong indicator that it serves a technical function.

Common Mistakes

• Assuming that a widely recognised shape — such as the Lego brick or a distinctive bottle — can be trade marked based on fame alone.
• Filing a shape mark without analysing whether the essential features are functional.
• Believing that acquired distinctiveness can overcome a functionality refusal — it cannot.
• Attempting to extend an expired patent's protection through a trade mark filing for the same shape.
• Adding minor decorative elements to a functional shape and expecting the filing to succeed.

Key Takeaway

Shape marks are the ""holy grail"" of IP because they can provide permanent protection for a product's appearance. However, the technical function trap is a rigorous gatekeeper. Businesses must distinguish between the functional utility of their designs and the decorative elements that serve as a badge of origin. If a shape falls within the trap, no filing strategy — and no amount of investment in brand awareness — will succeed.