Consumer Value as the Key to Trade Mark Functionality

By Professor Ilanah Fhima (Professor of Intellectual Property Law at UCL Laws and Co-Director of the Institute of Brand and Innovation Law).

A green pedestrian crossing light at a street in London. In the background, there are buses, people walking and a cafe.

7 January 2022

Publication details

Fhima, Ilanah (2022) ‘Consumer Value as the Key to Trade Mark Functionality’, 85(3), Modern Law Review, 661–696.

Summary

This article identifies the central role of consumer perceptions of value in design and marketing literature. Relying on this literature, it proposes changes to our legal understanding of functionality, the doctrine denying trade mark protection to technical and other features all traders must be free to access in order to maintain competitive markets. Marketing and design literature explains that consumers approach different values inherent in products holistically, influenced by emotional resonance. Thus, in the context of a developing body of interdisciplinary trade mark scholarship, the article advocates a move away from trade mark law’s formalistic approach to functionality, where technical and aesthetic product values are treated as distinct, and argues instead for a single consumer-focussed competition-based functionality exclusion, centred around the ‘substantial value’ exclusion to registration.

You can access the publication at: https://onlinelibrary.wiley.com/doi/epdf/10.1111/1468-2230.12709