What has happened?

• The Board of Appeal (BoA) of the EUIPO has held that an EUTM registration for the 3D shape of "TETRA BRIK" (below) is valid, overturning the previous decision of the Cancellation Division which held that the registration fell foul of Article 7(1)(e)(ii) of the EU Trade Mark Regulation. This provides that a sign shall not be registered if it consists exclusively of "the shape, or another characteristic, of goods which is necessary to obtain a technical result".

• Not all results of a technical nature fall foul of Article 7(1)(e)(ii). Here, the shape of the TETRA BRIK was not the cause of a technical result impacting on the manner in which the product is used, but rather the consequence of industrial engineering on its design and production. In other words, it did not have a direct effect on the utility of the TETRA BRIK from the relevant public’s perspective. This is an important distinction when considering technical result. 

• The fact that a particular shape has been the subject of a patent application (here, unsuccessful) does not necessarily mean that it achieves a technical result such that it falls foul of Article 7(1)(e)(ii). 

• The BoA also dismissed the allegation that, by artificially substituting patent protection with trade mark protection, the applicant had filed the application in bad faith. Given the finding that the shape did not achieve a technical result, the BoA concluded that there could be no bad faith. This aspect of the decision is at odds with the Advocate General's recent opinion in the CeramTec case.

• The cancellation applicant has filed a further appeal to the EU General Court in this case so this might not be the last we hear on the issue. 

TETRA BRIK mark

Want to know more?

Article 7(1)(e)(ii) excludes trade mark protection for signs consisting exclusively of "the shape, or another characteristic, of goods which is necessary to obtain a technical result"

The BoA agreed that the Cancellation Division had identified the correct 4 essential characteristics of the shape mark:

• A brick with four wall panels and four truncated angles creating an octagonal shape with a roughly square cross-section

• The four truncated angles in the form of rounded hexagons/parallelograms, with a surface that is concave rather than plane

• The four wall panels narrowing in their middle part and flaring upwards and downwards

• The upper part of the brick equipped with a sealing fin crossing the top surface and extending to two corner flaps which are folded down to two of the vertical wall panels.

The BoA found that the earlier patent applications were relevant and that the contested mark was indeed designed to achieve a certain result that is technical in nature (that is, solving the technical problem of improving the ratio of the container volume in relation to the packaging material needed by means of the specific arrangement of the features of the packaging). This was achieved by the first three characteristics while the fourth was simply necessary to ensure that the packaging would be hermetically closed.

However, this did not mean that all results of a technical nature were ‘technical results’ within the meaning of Article 7(1)(e)(ii).

The BoA repeated prior CJEU case law confirming that the expression "necessary to obtain a technical result" must be interpreted as meaning that the essential characteristics of the shape must "perform a technical function".

The benefits offered by the shape of the mark, including offering more space for printing, having certain eye-appeal, while maximising volume and retaining the capacity of the container to be grasped and stacked were considered "commercial benefits" – these were not considered "technical results" within the meaning of Article 7(1)(e)(ii).

The BoA concluded that Article 7(1)(e)(ii) applies where the shape at issue has a direct effect on the utility that the good in question is intended to have from the relevant public’s  perspective.

The relevant public were identified as foodstuff producers who fill the containers with  foodstuff or liquid, and distribute them under their own trade mark.

Here, the technical result achieved by the characteristics of the shape related to the manufacturing process of the product itself without influencing the function  performed by the product in the normal course of use by the relevant public.

In other words, the shape of the mark was not the cause of a technical result impacting on the manner in which the product is used, but rather the consequence of industrial engineering on its design and production. In such cases Article 7(1)(e)(ii) does not apply. 

The decision should be contrasted with the ruling in the Philips case where the shape of the three-headed rotary shaver was deemed necessary to achieve a technical result.

Art 59(1)(b) allows for the invalidation of a registered EU trade mark, if it was filed in bad faith

The applicant for invalidity had presented only one argument : "…since the EUTM application was filed with the intention of obtaining an  exclusive right for purposes other than those falling within the functions of a trade mark (namely artificially substituting patent protection by trade mark protection), the proprietor had been acting in bad faith when filing the trade mark application."

The BoA rejected the bad faith claim holding that it was exclusively based on an incorrect premise that the contested mark was necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii).

Because the shape mark registration was held by the BoA not to be contrary to Article 7(1)(e)(ii), and therefore not filed for the purpose of perpetuating patent protection, the bad faith claim failed. There was no need to consider the trade mark applicant's state of mind when it filed the trade mark application. 

Tension with CeramTec?

This aspect of the decision is slightly at odds with the recent opinion of the Advocate General in the CeramTec case, which says that bad faith should still be considered even if the technical result objection falls away since the two grounds are autonomous (although related). Whether a mark achieves a technical result is an objective question whereas whether there is bad faith depends on the state of mind of the trade mark applicant at the time of filing the application.

In other words, there might still be bad faith even if a mark is found not to achieve a technical result. Conversely, the fact that a mark has benefited from patent protection would not necessarily lead to a finding that the application was filed in bad faith.

The ECJ decision in the CeramTec should resolve the dispute.

What does this mean for you?

• Shapes of products can often sit on the crossroads of overlapping IP rights, such as patents, designs and shape trade marks. All shapes will be to some extent functional but the BoA decision in this matter confirms that Article 7(1)(e)(ii) is not necessarily intended to prevent the cumulation of different IP rights.

• The article is intended to prevent the registration of those shapes of goods which in the course of normal use would be the cause of a technical result ie those shapes, which are in the nature of technical solutions. Protection of such shapes would prevent third parties from adopting the same technical solution following the expiry of any patent rights, impeding progress.

• This case confirms that it is important to consider all forms of IP, including trade mark protection, even in those industries where brands do not necessarily play the main role in product selection.

• Those with an interest in protecting shape marks of this kind should watch out for any appeal in this case and the ECJ's decision in the CeramTec case.