UCL Faculty of Laws


What is the function of functionality in trade mark law?

12 February 2020, 5:30 pm–8:15 pm

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UCL Laws Events


Denys Holland Lecture Theatre (UCL Laws)
Bentham House
Endsleigh Gardens


Chaired by: Daniel Alexander QC, 8 New Square, Deputy High Court Judge and Appointed Person, UK IPO.

About this event

The subject matter of trade mark law has expanded. EU trade mark law, for example, permits any distinctive sign to be registered as a trade mark (provided that it can be represented clearly and precisely enough) which includes characteristics such as the shape or colour of the goods or its packaging. This could be problematic. While trade mark registration might protect the messages these features convey to consumers about the origin of those goods, the trade mark owner might also enjoy ‘back-door’ protection of what the product is, how it works or why it enjoys consumer appeal. In this way, trade mark law has the ability to encroach on aspects of a product which other IP rights are there to protect, or deem should properly vest in the public domain. Trade mark protection ceases to promote fair competition when it oversteps its intended role, and once product markets are blocked, consumers have to pay higher prices or simply make do with less choice.

Fortunately, EU trade mark law includes a safeguard in the form of three ‘functionality’ exclusions which keep free those characteristics of goods which other traders need to access in order to compete. These exclusions prevent registration of signs which result from the nature of the goods, which are necessary to achieve a technical result, or which otherwise give substantial value to the goods. The legislature clearly sees this as important because unlike many other absolute grounds for the refusal, an objection that the subject matter is ‘functional’ cannot be overcome by evidence that the mark has acquired a distinctive character.

Yet, the effectiveness of these provisions is difficult to gauge, despite having been part of harmonised law for over 20 years. This area of law is not well-understood because the exact competition goals remain murky, and the extent to which the three exclusions overlap is unclear. Nevertheless, a provision that was originally limited to features of shapes, has been recently extended to cover other characteristics of goods. Although the intention is clearly to prevent a greater range of signs from achieving registration, the full extent of scope and likely application of the revised functionality provisions is now even more difficult to predict.

Perhaps we should look to US law for the solution, since functionality has been an integral part of US trade mark law for far longer. Yet arguably, the position over The Pond is not much clearer. Utilitarian functionality is applied inconsistently, despite a landmark ruling by the US Supreme Court on the subject, while aesthetic functionality – to the extent that courts actually recognise it as a doctrine – is rarely found, even when granting trade mark protection over a feature would seem to place competitors at ‘a significant, non-reputation-related disadvantage.’

UCL Law’s Institute of Brand and Innovation Law brought together a distinguished panel to explore the proper role of the functionality exclusions in trade mark law.


17:30 Registration and tea
18:00 Event begins
19:30 Reception
20:15 Event ends


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