ZNAČAJAN UTJECAJ OBLIKA PROIZVODA NA VRIJEDNOST PROIZVODA KAO APSOLUTNA PREPREKA ZA REGISTRACIJU ŽIGA

Abstract

The paper provides a comprehensive analysis of “substantial value rule” as an absolute ground for trademark refusal. Originating from the US “aesthetic functionality doctrine”, the rule took a specific form in the EU. There it was incorporated in Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks – Article 4 (1) (e) (iii), as well as in Regulation (EU) 2017/1001 on the European Union trade mark - Article 7 (1) (e) (iii). Pursuant to “substantial value rule”, signs consisting exclusively of the shape that gives substantial value to the goods are not to be registered as trademarks or, if registered, are liable to be declared invalid. The objective of the paper is therefore threefold: a) to define the rationale of “substantial value rule”; b) to analyze relevant case law; c) to conclude whether a respective rule shall be abolished (providing its purpose may be achieved by other legal instruments without negative side-effects) or kept in the EU trademark law system. Bearing in mind the rationale of “substantial value rule” (on the one hand) and numerous problems that arise whenever “substantial value rule” is applied in practice (on the other hand) the paper provides guidelines for its appropriate interpretation.