Spring Clean for Law on Functional Features

Innovative product design benefits all, and should be encouraged by the availability of legal protection. However, the extent to which trade mark law can be used to protect visible functional features is still a vexing issue. When such features can constitute registrable trade marks was recently explored by the ECJ in Dyson Ltd. v Registrar of Trade Marks (C-321/03). The answer may be as difficult, however, as the problem it seeks to solve.

 

Dyson’s Application

The question sprang from a United Kingdom trade mark application (no. 2118079) filed more than 10 years ago. Dyson Ltd. had developed a unique vacuum cleaner with a transparent waste collection bin and sought protection for it as a series of two marks. In each case, the mark was described as follows:

“The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.”

The U.K. Patent Office refused the application on the grounds that the signs were devoid of any distinctive character, as well as serving to designate the kind and intended purpose of the product in question. Dyson appealed to the High Court, arguing that the objections were misfounded and that, even if they were well-founded, it could show that by the filing date in 1996 the signs had acquired distinctiveness through use in the U.K.

The question of acquired distinctiveness presented a legal wrangle. As of 1996, Dyson had held a de facto monopoly on vacuum cleaners with transparent plastic bins on the U.K. market. It had never promoted the transparent bin itself as a trade mark, relying instead on advertising and the absence of similar rival products to inform customers that the vacuum cleaners in question were from Dyson. The High Court wrestled with whether proof of acquired distinctiveness required use as a trade mark, and ultimately referred the question to the ECJ.

 

Cleaning Up a Storm

The ECJ handed down its ruling in January, and it makes for interesting reading.

Instead of giving its view on whether trade mark use is a necessary component of acquired distinctiveness, the Court took a step back and surveyed the bigger picture. In its view, the real question was not whether trade mark use was required to prove acquired distinctiveness of a visible functional product feature. It was instead whether a visible functional feature was capable of functioning as a trade mark at all.

The ECJ thought the answer was “no.” In its opinion, a visible functional feature such as that applied for by Dyson was not a sign capable of being graphically represented, which was capable of distinguishing the goods of one trader from those of another.

Applying first principles, the Court took as its starting point the definition of “sign” in Article 2 of the Trade marks Harmonisation Directive. Although Article 2 did not expressly exclude visible functional features as signs, the definition of “sign” had to be construed purposively, and the purpose of the provision was to prevent the abuse of trade mark law as a means of gaining unfair competitive advantage.

In the Court’s view, Dyson had not applied to protect a sign, but rather a concept for collecting, storing and emptying vacuum cleaner waste. As observed previously by the Advocate General, the fact that the application showed two completely different visible forms supported the view that the concept in question could be applied to myriad different vacuum cleaner designs, and the ways in which the concept could be applied would only grow as vacuum cleaners themselves evolved.

The ECJ appeared sympathetic to the Advocate General’s opinion that the sign was neither uniform nor durable, and that the result of a grant of protection would be to exclude competitors from using any type of transparent waste collection bin on a vacuum cleaner. The Court regarded this as incompatible with the policy behind the limitation of trade mark protection to certain types of signs.

 

The Dust Settles

The ECJ did not go on to consider whether a sign such as Dyson’s could in any event acquire distinctiveness through use.

The Advocate General had thought not, on the grounds that the sign consisted exclusively of “the shape of goods which is necessary to achieve a technical result” under Article 3 (1) (e) of the Directive. Objections under that article are absolute and cannot be overcome by evidence of acquired distinctiveness. They would apply if the essential functional features of a shape were attributable only to the technical result they achieved, as the grant of trade mark monopoly rights in technical solutions would unfairly hobble competition.

Whilst acknowledging that Dyson’s signs were not shapes per se, the Advocate General considered that the reasoning still applied. In his view, a transparent plastic waste collection bin was a technical and functional feature of bagless vacuum cleaners. If such a feature were registered as a trade mark, competitors would be prevented indefinitely from taking advantage of the functional advantages of that feature. In his opinion, such features might be capable of protection as patents, but should not be the subject of trade mark protection of indefinite duration.

These findings made it unnecessary to reply directly to the High Court’s question on acquired distinctiveness, since Dyson's application would not be assisted by it.

 

Comment

The ECJ’s reasoned judgment, and the Advocate General’s opinion before it, reflect the emotive issues behind efforts to protect innovative, functional product features.

Trade mark registrations can be renewed indefinitely and protect against similar as well as identical marks. They are powerful tools against competitors and their attractiveness to innovators is understandable. However, the strength and longevity of trade mark monopoly rights makes them a potential weapon against fair competition, as well, and the courts and registration authorities need to balance competing interests in deciding whether to grant protection.

Certainly the question of whether visible functional features can constitute a trade mark needed an answer, and the Court’s thoughtful commentary is both helpful and interesting. However, it may have overstepped the boundaries of the national reference procedure by attempting to apply its interpretation of the law to the facts and finding that Dyson’s mark, in particular, was not a sign, rather than leaving the application of the law to the national court.

The ECJ’s overall ruling, however, is no great surprise. It was expected that it would affirm the Advocate General’s views on the incapability of visible functional features to function as trade marks, and there was expected, at the least, to be a strong undercurrent of disapproval of any grant of trade mark protection to Dyson’s marks.

That the ECJ declined to follow the Advocate General’s foray into technical function under Article 3 (1) (e) is right; the need for intervention was doubtful, and the legal basis for the Advocate General’s views perhaps not entirely stable. It is regretted, however, that the Court passed over whether acquired distinctiveness requires use as a trade mark. The many cases that would benefit from that legal analysis will simply have to wait; albeit, it is hoped, not too long.