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Technical function not enough for trademark protection

June 2018

According to trademark law, it is not possible to register marks as trademarks if they consist exclusively of a shape that is necessary to obtain a technical result.

Coffee capsules can be purchased in every supermarket, but not all coffee capsules are created equally. Only one provider was allowed to supply certain capsules made from aluminium. This patent protection has since been rescinded by the Bundespatentamt, Germany’s Federal Patent Office (Az.: 25 W (pat) 112/14). The protection under trademark law was rescinded to the extent that it covered coffee, coffee extracts, coffee-based preparations, coffee substitutes and synthetic coffee extracts. The Bundespatentamt justified this decision by stating that there were grounds for refusal pursuant to sec 3 para. 2 no. 2 of the MarkenG, Germany’s Trademark Act, in relation to these goods. It went on to say that the essential characteristics of this trademark served a technical function that was supposed to render its use in a coffee capsule machine advantageous.

We at the commercial law firm GRP Rainer Rechtsanwälte note that a mark can only be registered as a trademark if it possesses the distinctive character necessary to distinguish it from products and services of other providers. Three-dimensional marks, on the other hand, cannot be registered as a trademark if the shape is determined by the type of good itself or is necessary to obtain a specific technical result. The Bundespatentamt recognized this ground for refusal in the case of the coffee capsules.

As a rule, businesses need to be mindful that grounds for refusal can preclude registration of a trademark. There is said to be an absolute ground for refusal if there is a lack of distinctive character vis-Ă -vis the goods and services of other providers. This means that a mark must be suitably capable of distinguishing itself from other offerings such that consumers are able to attribute the goods or services to a specific business.

In addition, it is possible for there to be other grounds for refusal. For instance, the mark has to be capable of being displayed in a graphical format. Purely descriptive designations are equally impermissible, as there is a public interest against their exclusive use.

It is also important to ensure that existing trademark rights will not be infringed by registering a new trademark. Lawyers who are experienced in the field of trademark law can assess whether registering a trademark is possible and assert or fend off claims arising from trademark violations.

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