For some time already, there has been a tendency in European and German case law to restrict protection for signs containing functional elements.
For example, on November 10 2016 the CJEU ruled on the registrability of the Rubik's Cube as a trade mark (case C-30/15 P). The EU General Court had ruled that the sign as applied for did not consist solely of a shape necessary to obtain a technical result, because the rotating capability of the vertical and horizontal lattices of the Rubik's Cube did not result from the black lines in the trade mark representation but from an invisible mechanism inside the cube.
The CJEU disagreed with that finding and held that, as the sign at issue consisted of the shape of actual goods and not of an abstract shape, the technical function of the actual goods at issue had to be defined rather than relying solely on the graphic representation of the sign in the application. As the Rubik's Cube has a rotating mechanism, its shape is necessary to obtain a technical result and is thus precluded from registration as a trade mark.
On December 27 2016, the German Federal Patent Court held that a sign depicting the shape of a grape sugar plate was not entitled to trade mark protection because it consisted solely of a shape necessary to obtain a technical result (FPC, case 25 W (pat) 59/14). The FPC found that the rectangular form made it easier to store and transport the grape sugar plates. Their rounded edges reduced the risk of injury during consumption and the indentation in the middle was a predetermined breaking point. As trade mark law could not serve to obviate patent law, such signs could not be registered as trade marks, even though patent protection was generally not available for grape sugar plates.
In cases where patent protection may be obviated if a trade mark is granted, it seems convincing to deny registration as a trade mark. If patent protection is not or no longer available, the typical and appropriate way to protect one's products therefore was to seek protection under the law against unfair competition, provided the shape of a product showed individual character and had been copied by a third party.
However, with its decision handed down on May 4 2016, the German Federal Supreme Court (FSC) very much restricted the possibility to do so (case I ZR 58/14). The FSC upheld established case law that in order for such claims against imitations based on unfair competition law to succeed, the plaintiff needs to show unfair behaviour on the part of the defendant. However, in a break with previous case law, it will no longer be considered unfair behaviour for a defendant to copy a successful product in order to save costs on R&D and marketing.
While in reality it will often be difficult to identify other circumstances demonstrating unfair behaviour, the FSC found that there was no undue disadvantage for the plaintiff because he could simply file and accordingly rely on trade marks or design rights. However, considering the current tendency to deny trade mark protection for signs comprising any kind of technical function, affected companies are well advised to file design applications early on.
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