Unboxing Tetra Pak: General Court declares iconic carton shape invalid

When does a product shape have a technical function? What role does the manufacturing process play and what is a technical result anyway? The General Court answered (some of) these questions in its recent ruling in Lami Packaging (Kunshan) v EUIPO – Tetra Laval Holdings & Finance (Case T‑104/25).

Background

In 2000, Tetra Laval Holdings & Finance SA (“Tetra”) filed an application for registration of a 3D trade mark depicting its well-known octagonal packaging carton: 

The mark was registered for “packaging containers and packaging material made of paper or made of paper coated with plastic material” in Class 16.

In January 2022, Chinese competitor Lami Packaging (Kunshan) Co. Ltd (“Lami”) filed an application for a declaration of invalidity, arguing that the mark consisted exclusively of a shape necessary to obtain a technical result (Art. 7(1)(e)(ii) EUTMR) and that the registration was made in bad faith (Art. 51(1)(b) EUTMR).

The Cancellation Division of the European Union Intellectual Property Office (“EUIPO”) upheld the invalidity application on the basis of Art. 7(1)(e)(ii) EUTMR. On appeal, the EUIPO’s Board of Appeal (“BoA”) reversed the decision and dismissed the invalidity application. Lami brought an action before the General Court.

The General Court’s Decision

The General Court upheld the action, annulled the BoA’s decision and - exercising its power to alter - dismissed Tetra's appeal before the BoA.

The Court recalled that Art. 7(1)(e)(ii) EUTMR is intended to prevent trade mark law from granting a monopoly on technical solutions or functional characteristics of a product. In particular, the provision seeks to prevent exclusive rights subject to limited periods (such as patents) from obtaining protection without limitation in time.

A two-step analysis is required: first, the identification of the essential characteristics of the sign and, second, an assessment of whether all those characteristics perform a technical function.

1. Essential characteristics

The BoA identified four essential characteristics of the contested mark, which were undisputed:

• a brick with four wall panels and four truncated angles creating an octagonal shape with a roughly square cross-section;
• the four truncated angles are in the form of rounded hexagons/parallelograms, and their surface is concave rather than plane;
• the four wall panels are narrowing in their middle part and flaring upwards and downwards;
• the upper part of the brick is 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. 

 

2. Functionality

The BoA found that the prismatic shape reduced the quantity of material necessary to hold a given volume of liquid. This technical result was achieved by the first three essential characteristics listed above. The fourth characteristic made it possible to guarantee the hermetic closure of the packaging. Further, the shape of the contested mark ensured the stability and handling properties of the packaging.

The BoA considered that the functions of the shape were only of benefit for the manufacturer but not for the relevant public, namely professional intermediaries of the foodstuff industry who purchased empty packaging to fill them with liquids and foodstuffs. With respect to retailers and end-users, the BoA held that savings on transport costs were purely hypothetical, that sustainability gains were speculative in scope and that the fact that Tetra’s customers were able to sell a larger quantity of foodstuff products, benefiting from packaging of greater capacity compared to classic bricks, were benefits of a commercial but not of a technical nature.

The benefits for the manufacturer (less material for the same volume, stability and improved handling properties) related, according to the BoA, only to the manufacturing process but had no bearing on the function performed by the product. Thus, the benefits for the manufacturer did not constitute technical results within the meaning of Art. 7(1)(e)(ii) EUTMR.

The Court disagreed with the analysis of the BoA on the technicality of the essential features: The technical functions of the essential characteristics do not only pertain to the manufacturing process but relate to the way in which the product functions.

Optimising the container’s capacity makes the basic function of the product more effective. The shape of the container cannot be regarded as being merely the result of an optimised manufacturing process, which has no effect on the product’s function. This conclusion was supported by Tetra’s website on which the lighter weight of the packaging due to the use of less packaging material was advertised. The Court discarded Tetra’s argument that this advertising contained subjective statements. Catalogues and websites describing the technical function were relevant items of evidence. 

The Court held that the reduction of the weight and volume of the packaging constitute technical results that are relevant from the perspective of the targeted public, namely intermediaries in the foodstuff industry. The shape is likely to facilitate the goods’ storage and transport.

Further, the shape also achieved technical results that are relevant for end-users, even though they do not form part of the relevant public. The judges reasoned that taking end-users into account is warranted because professional intermediaries have an interest in ensuring that the technical result of the shape meets not only their own needs, but also those of the end-user. The Court relied on statements from a PCT application and Tetra’s website, which state that the packaging is easier to grasp and use for consumers and that the product was designed to adapt perfectly to all hand sizes to offer a more comfortable grip.

3. Arguments of Tetra

Tetra supported the BoA’s finding that the ability of the container to be grasped and stacked does not mean that the shape has a positive effect on those functionalities. The judges countered that Art. 7(1)(e)(ii) EUTMR does not require an improvement over an existing technical solution. The provision is supposed to prevent all technical results from being protected by trade mark law, not just innovative technical results.

The fact that other shapes might achieve the same results was deemed irrelevant. Art. 7(1)(e)(ii) EUTMR does not require a comparison with other shapes.

The Court was also not convinced of Tetra’s argument that the storing and handling of the product were commercial results and not technical ones.

It was not necessary for Lami to show that the technical function had economic benefits for the relevant public. This is not a condition of Art. 7(1)(e)(ii) EUTMR.

The Court did not see that any essential feature of the trade mark had a major non-functional, in particular a decorative or imaginative element, which could have avoided the application of Art. 7(1)(e)(ii) EUTMR. The fact that an essential and technical element also has aesthetic value or an unusual character does not preclude the application of Art. 7(1)(e)(ii) EUTMR. 

4. Power to alter

 
Eventually, the Court exercised its power under Art. 72(3) EUTMR to alter the BoA’s decision, dismissing Tetra Laval’s appeal before the BoA and thereby reinstating the EUIPO’s finding of invalidity.

Comment

The key takeaways from the decision:

1. The technical results achieved by the manufacturing process are irrelevant. The only decisive object is the shape or other characteristic of the goods and the question whether this obtains a technical result. Only if the manufacturing process has an impact on the shape or other characteristic of the goods - lighter weight, improved capacity, easier handling - are those effects technical results and can prevent registration.

 

2. The technical result need not be innovative to be covered by Art. 7(1)(e)(ii) EUTMR. Any technical result is sufficient. 

 

3. The General Court assessed whether the technical result of the shape was relevant to the targeted public (intermediaries in the foodstuffs industry) and downstream users (retailers and end-consumers). It is unclear whether such an assessment is necessary. The wording of Art. 7(1)(e)(ii) EUTMR does not suggest it and the purpose of the provision - to prevent technical results from enjoying trade mark protection - is fulfilled even where the technical result benefits no one or is even detrimental.

4.  Beware of how the goods are marketed. Emphasizing technical benefits in advertising materials will most likely be held against the trade mark owner. 

 

5. The fact that a functional element also has aesthetic characteristics is irrelevant. Art. 7(1)(e)(ii) EUTMR is not applicable only if there is an important non-functional element.