Tetra Laval’s 3D shape mark not exclusively functional, rules EUIPO Board of Appeal (and, no, it’s not automatically bad faith to seek longer IP protection for a successful product)

Would you say that the circumstance that a container for liquids was protected by a patent disqualifies that same container from being also protected as a shape mark due to the application of the technical functionality absolute ground in Article 7(1)(e)(ii) EUTMR? And is it bad faith to try and get a trade mark for the shape of that patented invention?

In an intriguing decision (R0012/2024-4 SHAPE OF A TETRA BRIK (3D)) rendered last month and concerning Tetra Laval’s (well-known) liquid container, the 4th Board of Appeal (BoA) of the EUIPO answered: ‘no’ and ‘no’.

Let’s see what happened and what the broader implications might be.

Background

In 2000, Tetra Laval applied to register the following shape as an EU trade mark (EUTM) for class 16 goods (“Packaging containers and packaging material made of paper or made of paper coated with plastic material”):

The EUTM was granted registration in 2004.

In 2022, Lami Packaging filed a request for a declaration of invalidity of the EUTM in respect of all goods, based on bad faith (Article 59(1)(b) EUTMR) and technical functionality (Article 7(1)(e)(ii) EUTMR).

The following year, the Cancellation Division declared the EUTM invalid due to it being exclusively a technical shape. As the request was granted on the basis of Article 7(1)(e)(ii) EUTMR, there was no need to consider bad faith.

The decision

Tetra Laval appealed. The BoA reversed the earlier decision and found that the EUTM at issue was neither exclusively a technical shape nor had it been filed in bad faith.

Technical functionality

As regards the claim that the EUTM would be a shape of the kind prohibited under Article 7(1)(e)(ii), the BoA started its analysis by recalling the rationale of this absolute ground and that the assessment should be conducted (Lego) as follows: first, by identifying the essential charcteristics of the shape in question; second, by determining if they perform a technical function.

Not only liquids:
Kats also take the shape of their containers
 

Proceeding accordingly, the BoA ‘broke down’ Tetra Laval’s shape and identified 4 essential characteristics:

1. A brick with four wall panels and four truncated angles creating an octagonal shape with a roughly square cross-section;
2. The four truncated angles in the form of rounded hexagons/parallelograms, with a surface that is concave rather than plane;
3. The four wall panels narrowing in their middle part and flaring upwards and downwards;
4. The upper part of the brick equipped with a sealing fin crossing the top surface and extending to two corner flaps which are folded down to two of the vertical wall panels.

The earlier patent (PCT application WO1997034809A1) held by Tetra Laval was then considered, in order to appreciate whether such characteristics would indeed be technical.

The BoA concluded that the essential characteristics of the shape in question “allow increasing the capacity/used material ratio, while ensuring package stability and handling properties”. Nevertheless, while “the contested mark was designed to achieve a certain result that is technical in nature, “[t]his does not […] mean that all results of a technical nature are ‘technical results’”.

In line with the case law of the Court of Justice of the European Union (CJEU), “the expression ‘necessary to obtain a technical result’ must be interpreted as meaning that the essential characteristics of the shape must ‘perform a technical function’ in order to achieve a certain technical result’”.

What matters is how consumers (in this case: “professional intermediaries of the foodstuff industry”) perceive the shape in question to function, not its method of manufacture (Nestlé). In other words, the question to ask is whether the shape has a direct effect on the utility of the good in question.

Applying this guidance, the BoA held that "the technical result achieved by the first three characteristics […] merely relates to the manufacturing process of the product itself without influencing the function performed by this product.” As such, the one at issue would not be a purely technical shape because it “is not the cause of a technical result impacting on the manner in which the product is used, but rather the consequence of industrial engineering on its design and production." In conclusion: 

the fact that the contested mark allows for an efficient volume-to-surface ratio while preserving the stackability, storage and handling of the product does not concern a technical result within the meaning of Article 7(1)(e)(ii) [EUTMR]. Indeed, the ability of a shape to contain more liquids or foodstuffs or to be easily packed and grasped is not a technical result achieved by the product in the normal course of its use. The shape at issue does neither perform a function on its own, nor in relation to other products.

Bad faith

Turning to Article 59(1) EUTMR, the BoA ruled out its application too, noting that Lami Packaging had based its claim on one argument only, that is: the EUTM was a ‘forbidden’ shape which Tetra Laval sought to protect under trade mark law with the purpose of artificially extending its IP ‘life’ by substituting trade mark to patent protection.

Since the BoA found that Article 7(1)(e)(ii) was not applicable to the shape at hand, the bad faith argument fell too.

Comment

This decision is intriguing for several reasons. Let me just focus on two relating to trade mark law and one to ... copyright.

As to trade mark law, the decision – in line with CJEU case law – further challenges the traditional view according to which shapes expressing a technical idea that was formerly covered by a patent are “regularly excluded from protection”.

Such a syllogism is both unduly simple and untrue because of (a) the very rationale of Article 7(1)(e)(ii) and (b) the basic fact that all shapes are – at least to an extent – functional. The provision does not intend to prevent cumulation of different IP rights – in this case: patents and trade marks. Instead, it (merely) seeks to prevent registration of “shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings”.

As the EUTM at issue in this case does show, even a shape as minimalistic and seemingly as technical as Tetra Laval’s may be considered such as to fall short of the application of the technical functionality absolute ground.

Furthermore – somehow refreshingly – not everything is bad faith! This absolute ground has been inflated in relevance over the past few years [see IPKat here and here for some recent applications], up to the point that throwing bad faith as a card (or even wannabe ace) in every cancellation application seems to have become the norm. In all of this, one might get to the point of thinking that it is bad faith simply to file an application to register a trade mark.

Asplund's Palais Royal

The BoA reminds us that that is untrue: to succeed on a bad faith challenge, it is not enough to note that the trade mark holder previously held a patent (or other IP rights, for what concerns the other grounds under Article 7(1)(e)) for the shape or other characteristic that is the subject a trade mark application/registration.

Turning to copyright, we know from CJEU case law that works of applied art are protectable solely based on fulfilling a requirement of originality (not other requirements). The recent Kwantum decision [IPKat here; see further here], in line with earlier CJEU case law, further confirms all of this.

To this end, what one is required to do is – once again – to break the object in question down and separate choices that are dictated by technical considerations, rules and constraints (these do NOT confer originality) from those that are BOTH free AND creative (these are the only ones relevant for copyright protection).

If we consider the essential characteristics of the Tetra Laval’s shape, would at least the first 3 essential characteristics - considered together - pass the threshold of freedom and creativity required under EU law? If one reasoned like the BoA did, that is by separating the question of the cause of the design choices from that of the consequences thereof, then the answer might be in the affirmative.

If this was the correct approach, it would be very good news for designers adopting a minimalistic style, as it is the case of designs like those of the Asplund Palais Royal table at issue in Mio [IPKat here] and USM Haller’s modular furniture at the centre of konektra [IPKat here].

In other words: originality under copyright might be fulfilled not only by adding when designing, but also by removal and subtraction. We will hopefully know more when the CJEU decides these now joined referrals (the CJEU hearing is scheduled to take place this month), which are key not only for copyright but – more broadly – the IP protection of rather simple (yet slick) objects with also substantial functional components.