Protection for Mixed Trademarks? The Shape between Distinctiveness and Technical Function

Abstract

The purpose of the following article is to analyse the legal and jurisprudential position of the “mixed trademarks,” a controversial sub-category of the shape trademarks, defined as those particular shape marks in which technical functional and distinctive elements are combined together. The issue about the validity of mixed trademarks arises with reference to art. 7(1)(e) of E.C. Council Regulation 207/2009, which establishes an absolute refusal of registration rule for those trademarks whose shape exclusively consists of (i) the nature of the good itself, (ii) the shape necessary to obtain a technical result, (iii) the shape which gives substantial value to the good. Furthermore, particular emphasis will be put onto the recent decision on the Court of Justice of the European Union (CJEU) on this unique legal issue, the famous “Lego Case.”The structure of the article will consist on a first general introduction to the “big family” of non-traditional trademarks. After that, it will focus in particular on the main characteristics of the shape trademarks, in the light of the restriction of art. 7(1)(e)(ii) of E.C. Council Regulation 207/2009. Then, it will analyse the features of the mixed trademarks, between distinctiveness and technical function. Finally, a short analysis of the Lego Case will be provided, in order to explain the most recent position of the CJUE on mixed trademarks, referring also to the first decision that the European Supreme Court took on this issue, the famous Philips vs. Remington.