Latest JIPLP

The February 2011 issue of JIPLP is now available online.  The full contents of this issue can be viewed here. The Editorial, which deals with branding issues raised by the Chilean miners rescued last year (Los 33), reads like this:

"Instant branding, Chile-style

Some brands take years to mature from a mere trade mark or indicium of origin into a fully fledged promise. This promise can take many forms. In the nineteenth and early twentieth centuries, this usually meant a guarantee that branded products are reliable, repairable, durable, cheap, or functionally efficient. Thereafter, the promise has increasingly adopted aspirational content: slogans such as ‘Be sociable, have a Pepsi’, ‘Happiness is a cigar called Hamlet’, ‘Reach out and touch someone’, ‘Just do it’, and ‘Don't be vague. Ask for Haig’ tell you nothing about the goods or services in question, but say more about the manner in which the consumer views, values, or wishes to promote himself.

Branding is a slow process because it requires time to educate the consumer as to what the brand value means, and then more time for the consumer to assess the full meaning of the brand proposition, to decide if it fits the consumer's wish-list and to try it out.

Some forms of branding, for example event brands, can cut corners and accelerate the process of adoption by the public, but usually at the price of their sustainability. Thus Beijing 2008 was an immensely commercial brand proposition for businesses in the years leading up to the Olympic Games held there. Bidding for the right to use it was competitive and laws gave it extra protection. Its core values of international competitiveness and individual excellence were meaningful to consumers and producers alike—yet now the brand is all-but-valueless. London 2012 has replaced it, with Rio 2016 awaiting its turn.

Another form of brand that can spring suddenly into a state of commercial viability is that which is born of the moment, a creature of opportunity. British readers will recall how the escape of two intelligent pigs on their way to the abattoir and the way they evaded farmers, policemen, and the public at large for a week before their recapture led to the registration of the ‘Tamworth Two’ as a trade mark. A far greater event in terms of its global appeal, and far more likely to be exploited on a grand commercial scale, is the ‘Los 33’ brand, representing the dreadful plight, stalwart resilience, and unprecedented rescue of 33 trapped Chilean miners from what would otherwise have been a slow, dark, and horrific death.

But what can one do with the brand? The first thing a trade mark attorney wants to know is what classes of goods and services in the Nice Classification should be made watertight by registration. While some things are unlikely to benefit from such branding it is by examination of the brand's core values that one is likely to reach a commercially realistic conclusion.

In this case, the brand's core values appear to have fluctuated violently over a few short weeks of intensive, indeed intrusive, media attention. The 33 miners, first thought to be irretrievably lost, were then reckoned to be subject of a long-term rescue that would leave them in (for most of us) unimaginable discomfort for half a year while a by-no-means-guaranteed rescue was planned and executed. From victims they morphed into heroes as their spirited and positive attitude towards their predicament shone from the suffocating dark and illuminated our own worlds. More recently, it was the seedier side of a Chilean miner's life which riveted the world's attention, as mistresses have combined or battled with lawful spouses in the battle for their bodies and their souls. Trapped, in more senses than one, Los 33 were in no position to explain, to deny, to apologize, or engage in whatever domestic damage limitation is practised to the West of the Andes.

Do these contradictory value messages add up to a marketable brand? Or will they relegate ‘Los 33’ to the realm of key-ring fobs, picture postcards, and other tourist trivia? These are not questions for the trade mark attorney to answer, yet he must be sensitive to them if he is to advise on the extent to which registration is necessary and on the contractual which bring in revenue. He must also be wise as to how the licence revenue is accounted for and shared. But that is a subject for another Editorial".

Miscellany

1. Readers have voted by a handsome majority to retain "ECJ" as the preferred abbreviation of the highest court in the Court of Justice of the European Union and, with immediate effect, the editorial team at JIPLP will use this abbreviation when editing articles and Current Intelligence notes. There are still some items in the pipeline in which "CJEU" has been used, but once they have passed through the system JIPLP will be consistent in its use of ECJ. For the record, 69% of respondents opted for ECJ, while just 25% favoured CJEU. We'd be grateful if contributors of future copy would please bear this in mind when submitting material for publication.

2. Subscribers to the January 2011 hard-copy version of JIPLP should all by now have received their copies. If you're not sure whether the most recent copy received is the current one, check the colour: if it's a silvery grey, it's last year's; if it's purple, it's this year's.

3. "Traditional knowledge products in Latin America and their misappropriation", by Marcelo A.G. Bardi, Evelyn Gutiérrez-Oppe and Rodolfo Politano, was published in Journal of Intellectual Property Law & Practice (2011) 6(1). This article originally included a reference to K. W. Tupper, "Ayahuasca healing beyond the Amazon: the globalization of a traditional indigenous entheogenic practice" (2009) GN 9, 117-136. This citation was however lost in the publishing process. We apologise for this omission.

Turkish legislation on GMOs and the Biosafety Council takes effect

Author: Mehmet Artemel (Bogazici University, Turkey)

Regulations on Genetically Modified Organisms and Products Thereof, Regulations on the Operating Procedures and Rules for the Biosafety Council and Committees, Official Gazette, Issue No. 27671 of 13 August 2010

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpq201, first published online 18 January 2011

Following the entry into force of the Biosafety Law together with the GMO and the Biosafety Regulations on 26 September 2010, three GM events were subjected to the scrutiny of the Biosafety Council, for the first time within the framework of the new Turkish biosafety regime, at its meeting on 26 October 2010.

Legal context

The Turkish Biosafety Law (Law No. 5977), reviewed in the July 2010 issue of JIPLP, came into force on 26 September 2010 concurrently with two related Regulations: Regulations on Genetically Modified Organisms and Products Thereof (the ‘New GMO Regulations’) and the Regulations on the Operating Procedures and Rules for the Biosafety Council and Committees (the ‘Biosafety Council Regulations’), both published in the Official Gazette No. 27671, 13 August 2010.

The Regulations were issued by the Ministry of Agriculture and Rural Affairs under the authority derived from Article 16 of the Biosafety Law, under which the Ministry is entrusted with the responsibility to issue regulations pertinent to the implementation of the Law. Incidentally, these Regulations should have been issued by 18 June 2010 in accordance with the provision that ‘The Regulations which lay down the procedures and rules concerning the implementation of this Law [the Biosafety Law] shall be issued by the Ministry at the latest within three months as of the publication of the Law’. Notwithstanding, the Ministry's failure to comply with the prescribed legislative timeframe, the Regulations are welcome as they shed light on the implementation of the Biosafety Law and lay to rest the former Regulations which were dogged by legal mayhem and lawsuits before the Council of State.

Facts

Of the two Regulations, the New GMO Regulations are the heftier, consisting of 26 sections (‘Section’ and ‘Article’ denote the provisions of the Regulations and the Biosafety Law, respectively) and four appendices including a specimen application form for imports of GMOs (Appendix 1), a sample registration form (Appendix 4) as well as several lists on the information required where applications for the deliberate release of GMOs other than plants for experimental purposes (Appendix 2) and for the deliberate release of genetically modified plants for experimental purposes (Appendix 3) are concerned.

The Regulations Governing the Import, Processing, Export, Control, and Supervision of Organisms and Products, the Genetic Structure of which have been Modified for the Purposes of Foodstuffs and Animal Feed (the ‘Former GMO Regulations’, Official Gazette No. 27388, 26 October 2009), have thus been repealed through section 24(1) of the New GMO Regulations.

The Biosafety Council Regulations provide for the establishment of a Biosafety Council, a roster of Experts and Committees (section 4(1)), entrusted with the examination of applications relating to the placing on the market of GMOs and products derived from them for the purposes of food, feed and processing, and to the deliberate release of said products as well as the contained use of genetically modified microorganisms (GMMs). According to section 10(1), in respect of each application, the Council will form an ad hoc committee consisting of eleven members to be designated from among the enlisted experts who will be responsible for conducting a scientific assessment.

Analysis

There follows below an examination of selected issues in the light of the new Regulations. Remarks made in the context of an earlier Current Intelligence note in JIPLP on the Biosafety Law remain relevant and require no further elaboration, save where the provisions of either Regulations render it necessary to do so.

GMO threshold


According to the Biosafety Law, where the term ‘threshold’ is not defined, the Ministry of Agriculture is the competent authority to set the applicable threshold for a GMO, taking into consideration the opinion of the Biosafety Council and the characteristics of the particular GMO (Article 8(1)(h)). By contrast, the New GMO Regulations define ‘threshold’ in section 4(k) as ‘The minimum limit for approved genes, to be determined by the Ministry in the light of the Council's opinion, above which a product shall be required to be labelled as containing GMO’.

The relevant provisions of the Biosafety Council Regulations refer, in addition, to the role of the committees, whereby the Council is to provide its opinion as to the threshold level in the light of the respective committee's scientific assessment (sections 7(1)(g) and 10(1)). Although the Regulations might have been appropriate instruments wherein a standard statutory threshold limit could have been set, in hindsight, not to have done so seems to have been a sensible strategy considering that the European Commission's ‘Recommendation of 13 July 2010 on guidelines for the development of national co-existence measures to avoid the unintended presence of GMOs in conventional and organic crops’, which in the context of co-existence measures have arguably allowed greater leeway to Member States to adopt varying threshold levels, notwithstanding that co-existence is not an issue in Turkey's case since cultivation of GMOs is not in any event permitted under the current legislation. Accordingly each application for a GM event will prove to be a test case as regards the threshold level to be established in connection with it. For instance, at the second meeting of the Biosafety Council, a threshold has been set for soybean as mentioned under the ‘Practical Significance’ section below.


Positive claim labelling

The New GMO Regulations enable positive claim labelling where, it shall be permissible, according to sections 18(1)(g) and 19(1)(e) respectively for food and feed labels to bear statements on equivalent products that are free of GMOs that they ‘do not contain’, ‘do not consist of’ or ‘do not derive from GMOs’.

Local gene owners

The so-called ‘gene owner’ (‘gen sahibi’) was defined under section 4(1)(h) of the earlier GMO Regulations as ‘the one who holds the rights to the patent over the modified gene or genes in the GMO or in products derived from it. Despite retaining the expression in the subsequently enacted Biosafety Law, the definition was removed. Likewise, neither of the two new regulations provides a definition for ‘gene owner’. References are, however, still made to ‘gene owners’ in sections 4(1)(f) and 8(1) of the New GMO Regulations. The latter section is noteworthy in that, for the first time, the possibility that local ‘gene owners’ might exist has been explicitly acknowledged, according to which ‘natural or legal person gene owners who have developed a GMO in the country are required to lodge an application with the General Directorate of Agricultural Research’ of the Ministry of Agriculture.

R&D on GMOs

Applications for R&D purposes have been considerably streamlined under the New GMO Regulations, possibly in response to concerns raised over the fact that the Biosafety Law did not sufficiently recognise the exigencies of such activities. Thus, while an application will not be required for R&D that originates in the country (section 7(1)), an authorisation from the Ministry is needed where GMOs are to be imported for R&D and educational purposes (section 7(2)) by filing a special application form with General Directorate of Agricultural Research (section 7(2)(a)) which is obliged to complete the requisite authorisation procedures within 15 days (section 7(2)(b)). Irrespective of whether GMO is imported, the Ministry is to be notified of the R&D results, within three months following the completion of R&D.

Uniform authorization procedure

Article 12 of the New GMO Regulations allow for the Biosafety Council to conduct a simplified authorisation (in Turkish ‘basitleştirilmiş işlem’) procedure by taking into consideration a ‘socio-economic assessment’ provided that the application is accompanied by previously conducted environmental risk assessments and is supported by information indicating that there exists no possibility of any harm deriving from the GMOs and products derived from them, to human, animal and plant health, nor to the environment or biodiversity. By contrast, under the relevant EU legislation, whereas in respect of genetically modified food and feed for placing on the market, Regulation 1829/2003 prescribes a standard authorisation procedure, a simplified procedure is applicable where the deliberate release into the environment of genetically modified plants is concerned (Article 7(6), Directive 2001/18).

Practical significance

One month to the day following the entry into force of the Biosafety Law and the two related regulations, an application by the Turkish Feed Manufacturers' Association for the import of soybean and soybean meal to be used as feed ingredients in mixed feeds came before the Biosafety Council on 26 October 2010. The Council deferred its decision to a subsequent meeting on whether a simplified procedure should be conducted concerning the Association's application for feed containing three GM events, namely MON 40-3-2 and MON89788 by Monsanto and A2704-12 by Bayer CropScience, on the ground that the requisite dossier was incomplete. The Council did, however, at this same meeting, determine the threshold value for GM soybean at 0.9 per cent which marks the first substantive decision of the Biosafety Council within the framework of the new Turkish biosafety regulatory regime.

How shall we abbreviate the Court?

According to the Curia website (here):

"Since the establishment of the Court of Justice of the European Union in 1952, its mission has been to ensure that "the law is observed" "in the interpretation and application" of the Treaties.

As part of that mission, the Court of Justice of the European Union

* reviews the legality of the acts of the institutions of the European Union,

* ensures that the Member States comply with obligations under the Treaties, and

* interprets European Union law at the request of the national courts and tribunals.

The Court thus constitutes the judicial authority of the European Union and, in cooperation with the courts and tribunals of the Member States, it ensures the uniform application and interpretation of European Union law. 

The Court of Justice of the European Union, which has its seat in Luxembourg, consists of three courts: the Court of Justice, the General Court (created in 1988) and the Civil Service Tribunal (created in 2004). Since their establishment, approximately 15 000 judgments have been delivered by the three courts".

How then should we abbreviate the name of the European Union's top court?  "ECJ" is commonly used, standing for"European Court of Justice", an appellation which is both incorrect and liable to be confused with the European Court of Human Rights, since the latter too purports to dispense justice. "CJEU" (for "Court of Justice of the European Union") is technically a blanket term for the not-the-ECJ and two other tribunals, while "CJ" for "Court of Justice" can be confused with a national court and can also stand for "Chief Justice".

This blog is accordingly running a poll, to let readers express their opinion.  Please use this facility: if a consensus is established it might govern not only the house style of the Journal of Intellectual Property Law & Practice but other periodicals and titles in the English language. The poll is located at the top of the jiplp weblog sidebar.

Fuzzy boundaries, woolly limitations and over-broad claims: a case-study in insufficiency

Author: (Matthew Fisher, University College London)

Novartis AG & Cibavision AG v Johnson & Johnson [2010] EWCA Civ 1039, Court of Appeal for England and Wales, 30 September 2010

Journal of Intellectual Property Law & Practice (2011) doi: 10.1093/jiplp/jpq190, First published online 11 January 2011.

The central question when assessing sufficiency of disclosure for the purpose of establishing the validity of a patent is to ask whether the skilled person can readily perform the invention over the whole area claimed without undue burden and without needing inventive skill.

Legal context

Where a patent is granted, consideration must move to the public. Accordingly, by eschewing secrecy, the inventor who seeks the exclusivity of a patent must disclose their claimed invention in a form that is clear enough and complete enough for it to be carried out by a person skilled in the art. In other words, their disclosure must be sufficient. Failure to satisfy this condition renders the patent invalid and liable to be revoked.

The Court of Appeal's decision in Novartis & Cibavision v Johnson & Johnson explores the sufficiency requirement and, in doing so, sheds some light on fuzzy boundaries, woolly limitations and over-broad claims.

Facts and analysis

Novartis and its exclusive licensee, Cibavision, appealed against the decision of Kitchin J [2009] EWHC 1671 (Pat), in which he held that although Johnson & Johnson's (J&J) Oasys contact lenses fell within the scope of claims 1 and 24 of Novartis' European Patent (EP (UK) No. 819,258), the patent itself was invalid on grounds of insufficiency.

By the time of the appeal, J&J had accepted the judge's finding of infringement and so the patent's validity was the only issue. Moreover, it was common ground that Novartis' case was to stand or fall by reference to claim 1 only.

Claim 1 of the patent related to the manufacture of contact lenses made from a polymeric substance comprising at least one of both oxyperm- and ionoperm-polymerizable materials. The essential requirement, according to the claim, being that the lens should have high oxygen and high ion permeability, thereby making it suitable for extended periods of continuous wear.

The decision


Lord Justice Jacob, giving a judgment with which Ward and Patten LLJ agreed, quickly set the tone: by paragraph 8 it was eminently clear that things had gone very wrong indeed for the patentee. Thus, the claim was criticized from the outset for its ‘extreme breadth’ and ‘essentially purely functional nature’, being described as ‘practically a claim to anything that works’. Thereafter, by a process of slow evisceration over the course of the next 84 paragraphs, Jacob LJ proceeded to dissect, scrutinise, and chronicle the precise failings of Novartis' claim.

While the patent was thoroughly pulverized, this was not a judgment in which words were minced. Accordingly, after listing the claim's main elements, Jacob LJ stated:

"The reader might be forgiven for initially supposing that this apparently detailed list of elements would lead to a monopoly of reasonably defined scope, that each of the elements actually meant something by way of delineating the monopoly. But the reader would be wrong. Upon analysis it turns out that the elements are mostly meaningless and what is left is no more than a claim to a lens made from two types of polymer, provided it works".

For the patentee this was arguably a high point, as things went rapidly downhill from here. Not only were the criteria for choosing the constituent components of the substance from which the lens was to be created ‘extremely wide’, but each was also described as having ‘woolly limits’ as well. There was, according to the Court, ‘a lot to be said for the view that the claim should never have been allowed as not complying with Art. 84 of the EPC’ – i.e. the requirement for clarity and support. However, while such non-compliance is a ground for refusing grant, it is not, of itself, a ground of invalidity once the patent has issued. Unhappily for Novartis, other grounds took up the slack. Accordingly, ‘[u]ndue width’, as it was shortly called, could be excised using either non-obviousness, or insufficiency, or a combination of the two.

Returning to the claim, Jacob LJ highlighted the use of the phrase ‘ophthalmic compatibility’, a property that the lens envisaged by the patent was required to possess. Satisfaction of this requirement, he noted, had been found by the Judge to require ‘a small scale test on actual people’. But even this was ‘somewhat fuzzy’, as it was unclear what effect a failure of such a trial would have.

The remainder of the integers were found to add precious little; sufficing to limit the claim to things that ‘work’ but giving little guidance as to how to discern this without carrying out clinical tests. A key comment is found at [50] of the judgment:

So we come to an astonishing conclusion. Although the claim has a number of elements, hardly any of them have any significance … . In substance the claim amounts to this: if you try any pair of polymers, to see if they work (perhaps only after surface treatment) and find anything that does, we claim it.

Accordingly, the teaching of the patent was held to give the skilled reader hardly any assistance in determining whether a combination of polymers ‘works’ – and this notwithstanding that it stretched to 422 paragraphs over 53 pages. ‘Something fishy’ had gone on. Such fishiness became ‘all the fishier’ when the examples given in the patent were considered.

Surveying the other European decisions in which Novartis' claim had been litigated, Jacob LJ considered that the Dutch, German and French courts, as well as the Technical Board of Appeal of the EPO, had all made one fatal error. Not having the ‘benefit of the intensive probing of the facts and expert evidence afforded by cross-examination which is provided by English procedure’, they all assumed that the examples given in the patent did, in fact, work; however, this was not actually the case. Consequently, each failed to notice ‘just how devoid of meaningful limitations claim 1 is.’

Being unable to predict from the patent documentation whether any of the examples therein ‘worked’ or not, the addressee was left with a vexing question: what was he to do? Trial and error would be a major enterprise: the patent suggested selection of two polymerizable materials from two vast classes, with little guidance on proportions and no advice on how to assess if the blend is successful short of actual trial. If a selection ‘worked’ then this was all ‘well and good – but that would tell you nothing about the remainder of the vast ambit of the claim …. If it does not “work” then the patent does not help you as to what to do next.’

This, according to Jacob LJ, was ‘a long way off from satisfying the sufficiency test’. Brushing over the leading English authority, Mentor v Hollister [1993] RPC 1, he stated that he preferred ‘to go to Board of Appeal authority’ to support his view, and so turned to two decisions of the Technical Board: Decision T-0435/91 UNILEVER/Detergents and Decision T-0494/92 MYCOGEN/Plant gene expression. From these he drew the heart of the test to be applied: ‘Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?’

Following consideration of the decision in T-1743/06 INEOS/Amorphous silica, Jacob LJ agreed with J&J's submission that Novartis' patent ‘did no more than to invite the reader to perform a research program where, if he succeeded, the patent claimed the fruits of his research.’

The judge had therefore been correct to conclude that the patent was insufficient. Its instructions clearly did not meet the standard required.

It is no more than a ‘if you can find it, we claim it’ patent. Its avaricious ambit coupled with its failure to provide any help makes it nothing but a hazard to those conducting research into extended wear contact lenses.

Accordingly, it fell to be revoked in its entirety.

Practical significance

While the decision is unremarkable in its application of the legal principles – the test for sufficiency being adopted from the Board of Appeal authorities is essentially identical to that laid down in Mentor – the manner in which Jacob LJ's judgment is orientated, and the clear focus on the wider European context is worthy of note. It has been evident in a number of recent Court of Appeal decisions that Jacob LJ has his sights on a far more unified patent system in Europe than currently exists – the reference in Grimme Landmaschinenfabrik GmbH & Co KG v Derek Scott [2010] EWCA Civ 1110 to a wealth of German case law on the interpretation of the indirect infringement provisions within the Patents Act 1977 is cast from the same mould. It is therefore clear that, while the main thrust of the decision vents spleen over the canker that is the over-broad claim, the intended audience for this vitriol is not limited to those practising in England & Wales.

This is not really a decision aimed at English lawyers at all: there is not a single reference to the Patents Act 1977 to be found within the text. It is a judgment aimed at those on the Continent by whom the fishiness had gone unnoticed.

Community trade mark for Lego brick is knocked down

Authors: Jeremy Drew and Tamar Shafran (Reynolds Porter Chamberlain)

Journal of Intellectual Property Law & Practice, first published online 11 January 2011

Lego Juris A/S v Office for Harmonisation in the Internal Market, Mega Brands Inc. Case C 48/09 P, 14 September 2010

The Court of Justice of the European Union held that the iconic Lego brick shape cannot be registered as a Community trade mark since that shape is necessary to obtain a technical result.

Legal context

For as long as Community trade marks have existed it has been possible to register shapes as Community trade marks (Article 4 of Community Trade Mark Regulation 40/94, re-enacted in the consolidating Regulation 207/2009). Article 7(1) of the same Regulation sets out absolute grounds for refusal to register a trade mark. These grounds include signs which consist exclusively of the shape of goods which is necessary to obtain a technical result (Article 7(1)(e)(ii)). A shape mark which is barred from registration Article 7(1)(e)(ii) cannot become registrable by acquiring distinctiveness through use because it is not listed in Article 7(3) in the categories of marks which are capable of acquiring distinctiveness.

Facts

In 1996 Danish toy manufacturer Lego filed a Community trade mark application for the shape of its toy brick. OHIM registered the trade mark on 19 October 1999. Two days later Mega Brands, a competitor of Lego, applied to invalidate the trade mark which, it argued, should not have been registered since it was absolutely barred from registration. Among other things, Mega Brands argued that the Lego brick shape consisted exclusively of a shape which was necessary to obtain a technical result (Article 7(1)(e)(ii)).

During the subsequent 10 years the ECJ provided some clarification as to the registrability of shape marks (Case C-299/99 Philips [2002] ECR I-5475) by stating that a sign consisting exclusively of the shape of a product would be unregistrable where the essential functional features of that shape were attributable only to the technical result.

In 2004 Lego's brick shape was declared invalid by the Cancellation Division on the basis that the mark consisted exclusively of the shape of goods which was necessary to obtain a technical result (Article 7(1)(e)(ii)). Lego unsuccessfully appealed to the Grand Board of Appeal and the Court of First Instance (now the General Court) which in 2008 held that the addition of non-essential characteristics having no technical function was not sufficient to remove a shape mark from the ambit of Article 7(1)(e)(ii) where all the essential characteristics of that shape performed a technical function. Article 7(1)(e)(ii) also applied where there was more than one shape to achieve the same technical result.

Lego appealed to the Court of Justice (CJ), arguing that the General Court had:

* misinterpreted the scope of Article 7(1)(e)(ii) and departed from guidance set out in Philips;

* used the wrong criteria to ascertain the essential characteristics of three-dimensional shapes in failing to take into account the target consumer; and

* used incorrect criteria to determine the functionality of the characteristics of the shape.

The analysis below focuses on Lego's first argument which concerned the scope of Article 7(1)(e)(ii).

Analysis

The CJ considered Lego's argument that Article 7(1)(e)(ii) did not preclude the registration of any shapes which performed a technical function, but precluded only those shapes which created a monopoly on technical solutions or functional considerations. It also looked at Lego's submission that guidance given in Philips was disregarded when the General Court held that the availability of alternative shapes to perform the same technical function was irrelevant.

The CJ considered the balance between competition in the European Union and monopoly rights granted under intellectual property law: the purpose of Article 7(1)(e)(ii) was to prevent shape marks being used to create a monopoly on technical solutions or functional characteristics of a product. There were similar provisions in Community Design Regulation 6/2002. The condition of the shape ‘exclusively’ performing a technical function was satisfied where all essential characteristics of the sign performed a technical function. The fact that a shape may have additional non-essential characteristics would not take it outside the scope of Article 7(1)(e)(ii) if all the essential characteristics performed a technical function.

Rejecting Lego's argument that, where several shapes could achieve the same technical result there was no risk of creating a monopoly on technical solutions or functional considerations, the CJ followed Philips and confirmed that the expression ‘necessary to obtain a technical result’ did not mean that Article 7(1)(e)(ii) applied only if the shape was the only one which could achieve the intended technical effect. Since trade mark law prevents competitors using both identical and similar shapes, the registration of functional product shapes performing a technical function would make it difficult for competitors to market dissimilar shapes that were still functional.

Practical significance

This judgment supports the reasoning in Philips and illustrates the practical difficulty of registering shape marks that do not incorporate a major non-functional element, such as the brand name.

In following Philips, this judgment makes clear that the existence of other shapes which could achieve the same technical result does not preclude the application of Article 7(1)(e)(ii). It does however leave open the question of what amounts to the ‘essential characteristics’ of a sign and when those characteristics will be functional. This question may well be the subject of future litigation before the CJ.

It may seem unfair that an innovative, distinctive and ubiquitous toy shape (it was estimated that there were 62 Lego bricks for every one of the world's 6 billion inhabitants) cannot be protected. However, Lego had previously enjoyed patent protection for the brick shape.

At first sight the judgment might appear to offer a glimmer of hope to Lego in dealing with competitors who market ‘slavish copies’ of the Lego brick shape, suggesting that the company may be able to rely on unfair competition rules. In the authors' view this suggestion is hollow, since unfair competition rules are outside the CJ's remit.