The Authors' Take - Trademarks gone nuts: trademark monopolization of the visual outcome of a once patented method?

Trademarks gone nuts: trademark monopolization of the visual outcome of a once patented method? 

by Eva De Pauw

What is more interesting to an IP practitioner than the intersection between different IP rights? 

A recent decision of a district court in The Netherlands suggests the application of the ‘technical effect’ invalidity ground to trademarks covering the visual outcome of a once patented method. 

Following the implementation of the 2015 Trademark Package, the ‘technical effect’ invalidity ground now has a broader reach and covers not only shapes but also other characteristics that are ‘necessary to obtain a technical result’. The practical consequences thereof are still to be seen, since the CJEU has ruled in the Textilis case (C-21/18) that trademarks registered before the entry into force of the new rules cannot be struck down by these new, broader invalidity grounds. 

In the reported case, the trademark owner claimed an injunction relying on a trademark relating to the appearance of an aperitif nut which was characterized by a mottled pattern. This pattern was the inevitable result of applying a method on which the trademark owner once enjoyed a patent monopoly. However, the patent had expired and the defendant filed an interesting invalidity counterclaim, arguing that the trademark on the appearance of the nuts was invalid because the mottled pattern of the nut was caught by the invalidity ground ‘necessary to obtain a technical result’. It would go against the principles of patent law’s temporary monopoly to allow a company to enforce such a trademark. 

Although the court dismissed the invalidity counterclaim based on Textilis, the question arises what would have happened if the new, broader invalidity grounds would have applied, the mottled pattern of the nuts surely being ‘another characteristic’. The parallel with the Lego case is obvious and offers interesting food for thought.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]