Understanding the Scope of Exclusion under ‘Another Characteristic’ as An Absolute Ground of Refusal under Article 7(1)(e) EUTMR & Article 4(1)(e) EUTMD’

Abstract

In 2015, Article 7(1)(e) of the European Trademark Regulation (also known as the functionality doctrine) was amended to broaden its scope to include 'another characteristics'. As a result, the provision, which was previously limited to shape marks, was expanded to include other types of marks. The Louboutin case (C-163/16) prompted discussion on the applicability of this recast provision. However, the disputed mark was not assessed as per the amended provision. Thus, a missed opportunity to provide any guidance on its applicability. Later in Textiles (C-21/18), the Court of Justice of the European Union ruled that the amended provision could not be applied retroactively. Therefore, the courts have not interpreted the ambit of ‘another characteristic’ to date. This lack of authoritative guidance, in turn, has led to much debate around interpreting ‘another characteristic’.

The paper starts by setting a background to the original provision i.e., Article 7(1)(e) EUTMR/Article 4(1)(e) EUTMD to understand the underlying rationale behind the original provision. assess the nature and scope of the recast Article 7(1)(e) EUTMR by analyzing the EUIPO guidelines, Max Plank Study on European Trademark law, and opinion of the Advocate General and then referring to related scholarly articles to assess the workability of the recast provision. To understand the concept of functionality outside shape marks, the US doctrine of functionality and the factors developed in US case laws will be discussed briefly.
Lastly, the workability of the provision is assessed against various non-conventional marks such as color and sound marks.

Keywords: Trademark, another characteristics, functionality, non conventional marks, shape marks, absolute ground of refusal