Subject Matter (Trade Marks)

What is a Sign?

• A sign must satisfy the definition of a trade mark under section 1(1) of the Trade Marks Act 1994. Three elements must be demonstrated:
  • (i) there is a sign;
  • (ii) the sign can be represented adequately on the register; and
  • (iii) the sign is capable of distinguishing the goods or services of one undertaking from those of others.
• If any of these are not satisfied, the sign will not be registered (absolute ground for refusal under section 3(1)(a)). If the mark is wrongly registered, registration may be declared invalid under section 47(1).
• These three elements are the first of three general limitations on what can be registered as a trade mark. In addition, there are absolute grounds for refusal under section 3 and relative grounds under section 5.

What is a Sign?

• No statutory definition of the term “sign.” The starting point is section 1 of the 1994 Act, which provides a non-exhaustive list of sign types: words (including personal names), designs, letters, numerals, or the shape of goods or their packaging.
• The concept is not limited to visually perceptible matter; sounds and smells can also be signs (Court of Justice has held that signs include sounds and smells).
• The types of signs considered capable of constituting a trade mark have expanded beyond words or figurative devices to include:
  • words, letters, numerals (including media titles, slogans, hashtags);
  • figurative marks (pictorials, stylised words or numerals);
  • three-dimensional shapes (including product packaging);
  • the specific position of a sign on a product;
  • patterns (regularly repeated);
  • colours (single or combinations);
  • sounds;
  • motion or multimedia marks;
  • holograms; and a residual ‘other’ category.
• Some registries even recognize scents, tastes, and textures.
• Judicial reception: the more open approach is welcomed by trade mark owners because sensory branding can influence consumer decisions and enable multisensory branding; concerns about potential overreach and anti-competitive effects are noted.
• Limits on the scope of a sign: two key cases illustrate limits on what can be registered as a sign for trade mark purposes (see below).

Limitations for Shapes and Other Characteristics

• There are three exclusions (the ‘functionality’ exclusions) that prevent certain subject matter from being registrable as trade marks:
  • (a) nature of the goods: exclusive shapes that arise from the nature of the goods themselves;
  • (b) technical result: shapes necessary to obtain a technical result; and
  • (c) substantial value: shapes that give substantial value to the goods.
• These exclusions reflect policy rationales: (i) preventing anticompetitive monopolies over functional or technical features, and (ii) preventing life‑extension or indefinite protection for technical solutions, ensuring competition and that finite IP rights (e.g., patents) are not bypassed.
• The exclusions have been broadened beyond shapes to cover other characteristics that might be registered as marks (e.g., colour used for a technical function).
• Key point: the exclusions are designed to keep essential product characteristics in the public domain so competition remains feasible.
• The exclusions are applied flexibly: the 3(2) exclusions were originally about shapes, but EU law now extends to other characteristics; registries, not courts, are often leading the expansion due to limited jurisprudence.
• The three policy rationales apply to all three exclusions and align with the U.S. concepts of functional and aesthetic functionality.
• Non-retroactivity: the expansion of policy exclusions does not have retrospective effect for EUTMs (and likely for domestic marks).
• Exclusion of ‘exclusive’ nature: to be excluded, the sign must consist exclusively of an excluded matter. If there is a major non-excluded element, the sign may not be excluded as a whole.
• In cases like Lego and Gömböc, the court has clarified that a single sign may still be excluded even if some elements would be non-excluded if present alone; the mosaicking of exclusions (combining multiple excluded elements to reject a sign) is not permitted in general.
• Infringement issues: even if a sign is excluded, a sign may still be protected by other means (e.g., passing off) or by using other elements like a word mark in combination with a shape.
• Distinctiveness alone cannot rescue an excluded sign from registration; if the sign’s essential characteristics are excluded, registration can still be refused.

3.1 Preliminary Issues

• Two overarching policy rationales behind the exclusions:
  • Anticompetitive effects: protecting features that consumers might seek in similar products would allow a monopoly if granted through trade marks for technical solutions.
  • Life extension: preventing indefinite protection of technical solutions via trade marks where other IP regimes (patent) have finite terms.
• The exclusions extend from shapes to other characteristics (e.g., color with a technical function, pattern marks that affect the surface of goods).
• The approach to exclusions: identify the essential characteristics of the sign (the gist) before applying the exclusions. The essential characteristics are the most important elements; the registries decide what is essential, not the consumer.
• The two-stage approach to exclusions: identify essential characteristics (stage 1) and then assess whether they fit within one of the policy exclusions (stage 2).
• Consumer perception can be relevant in identifying essential characteristics (stage 1) and potentially in assessing substantial value (stage 2).
• Example illustrations: Novartis transdermal patch (essential characteristics); patterns such as the shape and arrangement of knobs, etc. are essential characteristics that may be linked to a technical function.
• The essential characteristics must be causally related to the technical function; in the technical result exclusion, the essential characteristics must be technically causal in achieving the result.
• The two-stage approach allows for detailed evidence, including consumer surveys, prior IP rights, expert opinions, or patent claims to establish the essential characteristics and their effects.
• If essential characteristics combine with a non-essential element (e.g., a word mark), the sign may escape the exclusion; however, this is a sensitive area because it can reframe the sign’s scope and affect infringement analysis.
• There is caution against broad shapes or patterns where the essential characteristics are too numerous or non-specific; a generalized sign may be refused if it would cover too broad a category.
• Stage 1 vs Stage 2: Stage 1 is about identifying what the essential elements are; Stage 2 is about showing that those elements perform a technical function (for the 3(2)(b) and 3(2)(c) analyses) or cause substantial value (for 3(2)(c)). Distinguishing this is important when analyzing complex marks.

3.2 Where the Shape Results from the Nature of the Goods Themselves

• Section 3(2)(a): a sign shall not be registered if it consists exclusively of a shape that results from the nature of the goods.
• Clarifications include three situations:
  • (i) natural products with no substitute (e.g., banana shape for bananas);
  • (ii) regulated products with mandated dimensions (e.g., rugby ball);
  • (iii) shapes with essential characteristics inherent to the generic function of the goods (e.g., kettle lid, handle, spout).
• The idea is to prevent a shape that is dictated by the nature or function of the product from being claimed as a mark, even if it might have acquired distinctiveness.
• AG reasoning in Hauck supports broad application of this exclusion beyond natural or regulated shapes to generic functional features.
• The “Collio” bottle case shows that bottle shapes adopted by industry (not dictated by the nature of the product) may be marketing decisions and not excluded by nature-of-goods reasoning.
• The policy aims align with preventing trade mark protection from restricting competition over basic functional features.
• The meaning of “the goods themselves” is fact-dependent and can be defined in multiple ways (e.g., the product category, the business context).
• Case law illustrates that a court may interpret this narrowly or broadly depending on the business context and the ability to demonstrate functional necessity.
• Questions arise as to whether a bottle shape that is conventional within a product category falls within this exclusion; decisions have found that conventional marketing shapes may not be excluded if not purely dictated by the goods’ nature.

3.3 Where the Shape is Necessary to Obtain a Technical Result

• Section 3(2)(b): a sign shall not be registered if it consists exclusively of a shape that is necessary to obtain a technical result.
• Rationale: to keep technical solutions, including manufacturing processes, freely available to competitors and prevent monopolization that would impede competition with respect to functional features.
• The narrow question is when the shape is truly necessary to achieve the technical result; other shapes that could achieve the same result may still render the mark non-registrable if the shape is still necessary to obtain the result.
• The Lego/Juris line of authority clarifies that “technical result” is not the same as a patent; the exclusion should cover shapes that are chosen to fulfil a technical function, not merely those that are functional in a general sense.
• The essential reasoning is that shapes that are primarily determined by technical considerations should not be registrable, so as not to hinder competition or lock up a technical solution via trade mark rights.
• The Nestlé v Cadbury decision further clarifies that even if prior patents exist, registration is not automatically barred; but if the features align with a patented technical solution, that strengthens the technical nature justification.
• LEGO test: the Court asked whether removing a component would prevent obtaining the technical result; if removing any essential feature would defeat the technical result, that feature is essential and the shape may be non-registrable.
• The test also considers whether a sign’s registration would block a range of shapes that could still provide the same function, which is not allowed under this exclusion.
• The 2-stage approach continues here: identify essential characteristics that perform the technical function, then assess whether those characteristics are exclusively responsible for the technical result.
• There is ongoing discussion about how to treat two-dimensional representations of three-dimensional shapes, as well as how to handle shapes that combine with other non-excluded elements (e.g., a word mark) to circumvent the exclusion.
• Guidance notes the Registry should examine the sign in the round, not just the representation, especially when the sign’s technological function may depend on features not visible in a static representation.

3.4 Where the Shape Gives Substantial Value to the Goods

• Section 3(2)(c): a sign shall not be registered if it consists exclusively of a shape that gives substantial value to the goods.
• Hauck and Gömböc lines of authority address this: the aim is to prevent the external features of goods from monopolizing consumer perception when they do not perform a technical or practical function.
• The exclusion applies even if the shape offers substantial value beyond pure aesthetics and can cover blended shapes where multiple characteristics contribute to the product’s attractiveness (e.g., a chair that provides safety, comfort, reliability in addition to aesthetic appeal).
• Gömböc extended the understanding to shapes without obvious aesthetic value if the shape itself is attractive to consumers for reasons beyond aesthetics and branding; the key test is whether the shape, by itself, has a material influence on consumer decisions to purchase.
• The substantial value test is objective and considers factors such as:
  • the category of goods (whether visual appeal typically matters in that category);
  • the artistic value of the shape;
  • the shape’s dissimilarity to common market shapes;
  • price differentials;
  • promotion focusing on aesthetic characteristics.
• The design-intellectual property interaction matters: if a shape also has design protection, the coexistence of IP rights does not automatically preclude a design-based or sign-based challenge; however, the substantial value exclusion should be applied with caution to avoid improper life-extension of IP rights.
• Important examples discussed include the TRIP-TRAPP chair and other iconic shapes where attractiveness contributes to market success but must be balanced against competition concerns.
• The Court of Justice emphasized that the substantial value exclusion covers shapes that are not purely artistic but can be valuable for reasons beyond mere aesthetics, including brand and consumer perception.
• Gömböc case clarifies that even shapes with abstract mathematical significance can qualify for substantial value protection if they are attractive to consumers and influence purchase decisions.
• The substantial value analysis is designed to ensure that trade mark protection does not substitute for design or other protections, and that the market remains open to multiple sellers.

Capable of Being Represented

• The second general hurdle is that the sign must be capable of being represented adequately on the register. This topic has been discussed in previous chapters but remains essential to ensure the sign can be precisely identified and protected.

Capacity to Distinguish

• The third hurdle under section 1(1) is that the sign must be capable of distinguishing the goods or services of one undertaking from those of others.
• This interacts with the relative grounds for refusal under section 5 and the absolute grounds for refusal under section 3(1).
• UK courts historically wrestled with the interaction between the sign’s capacity to distinguish and the lack of distinctive character (3(1)(b)). There was a risk that signs could be considered capable of distinguishing in the abstract but lack actual distinctiveness in respect of the goods/services at issue.
• A notable UK development involved a colour-and-shape mark for Mini Babybel cheese wheels. In that case, the court found that the sign could be capable of distinguishing only if a specific hue of red on the main body of the product was associated with the applicant’s cheese; thus, the mark had to be limited in hue to be capable of distinguishing. This indicates a potential revival of the absolute ground if distinctiveness cannot be demonstrated for the particular goods/services.
• If a sign is distinctive, it is by definition capable of distinguishing; the absence of distinctiveness is not a barrier to registration when the sign is inherently capable of distinguishing the goods of one undertaking from those of others in relation to the manner in which it is presented and used, but the threshold remains high.

Service Marks for Retail Services and Comparison Websites

• Service marks (signs used in connection with services) became registrable in the UK with the Trade Marks (Amendment) Act 1984 and are treated similarly to trade marks under the 1994 Act.
• Retail services (even if not in the Nice Classification) can be registered; registration can be allowed if the specification is broad but precise enough to indicate the services (e.g., bringing together a variety of goods for customers to view and purchase).
• Practical examples:
  • Praktiker Bau- und Heimwerkermärkte AG: registration for a retail business involving building and garden goods must be formulated to cover the services provided (retail services).
  • Netto Marken-Discount AG: price-comparison websites may be registered for related services, but the specification must identify the services being provided (e.g., bringing together pricing information on insurance services).
• The broad theme is that the sign may cover a range of services if it clearly designates the function and scope of those services, so long as the scope is not unduly broad.

Collective and Certification Marks

• UK law recognizes two forms of group marks: collective marks and certification marks.
• Collective marks distinguish the goods or services of members of an association from those of others; they indicate membership in a club or association (e.g., BIID, KITEMARK).
• Certification marks: the proprietor certifies that the goods or services bearing the mark possess a specific characteristic (origin, material, production method, or other characteristics), and the mark is used by others who comply with the certifying body's rules.
• The regulations for collective and certification marks are set out in Schedule 1 (collective marks) and Schedule 2 (certification marks) of the Trade Marks Act 1994. Key features include:
  • an arm’s length requirement (the proprietor cannot be in the same business as the products certified), and
  • regulations specifying who may use the mark, what is certified, how tests are conducted and supervised, and any fees.
• The Court has recognized that retail services can be covered by collective or certification marks in principle, but the scope of protection depends on the demonstration that the mark guarantees a particular quality or origin and is not merely a house mark.
• Issues arise in relation to genuine use, association structures, and the extent to which such marks guarantee origin or quality when used by multiple traders.
• Halloumi/Halloumi-like: disputes around regional or geographical indicators show how collective marks can be used to certify a product’s origin but require careful governance and use to avoid misuse or misrepresentation.
• The practical importance of collective and certification marks grows as private governance models and market privatization increase the reliance on private standards and marks of quality.

Connections to Foundational Principles and Real-World Relevance

• The subject matter requirements connect to foundational purposes of trade marks: source identification, consumer protection, and reduction of search costs for buyers.
• The three core requirements (sign, representable, capable of distinguishing) map to fundamental principles of certainty and predictability in branding.
• The 3(2) functionality exclusions reflect broader public policy to balance IP protection with competition, innovation, and access to technology.
• The evolution of the sign concept (to include non-traditional signs like sounds, scents, textures, and patterns) reflects a marketing reality where brands engage multiple senses to signal origin and quality.
• The two-stage approach for assessing exclusions creates a consistent method for examining complex marks, especially when non-traditional elements are involved.
• The interaction between trade marks and other IP regimes (patents, designs) is reinforced by the substantial value exclusion and the technical result exclusion, ensuring that features suited for patent protection are not unduly monopolized by trade marks.
• The UK and EU frameworks illustrate how the balance between robust protection for branding and competitive markets evolves through case law and harmonization efforts (e.g., EUTMR, TMD 2015, and related guidelines).
• Ethical and practical implications: multisensory branding can enhance consumer experience but raises concerns about overreach and the potential for monopolies over functional features; the law aims to preserve consumer choice and access to technology.

Equations, Numbers, and Key References (LaTeX)

• Trade Marks Act 1994, section references:
  • sign essentials: 1(1); absolute ground for refusal: 3(1)(a); invalidity: 47(1);
  • limitations on registration: 3(2) (the three exclusions) and 3(1) (distinctiveness related grounds);
  • service marks: separate treatment under TMA 1994, Sch. 2, para. 6 for collective/certification marks;
  • collective marks: TMA 1994, s. 49(1); regulations in Schedule 2;
• Case references (illustrative, not exhaustive):
  • Philips v. Remington: Case 299/99, [2002] ECR I-5475; [78]; [80]; [81];
  • Lego Juris v. OHIM: Case C-48/09P, [2010] ECR I-8403; [72];
  • Hauck GmbH & Co. KG v. Stokke A/S: Case C-205/13, EU:C:2014:2233; [34];
  • Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. v. Szellemi Tulajdon Nemzeti Hivatala: Case C-237/19, EU:C:2020:296; [45]–[46];
  • Nestlé v. Cadbury: Société des Produits Nestlé SA v. Cadbury UK Ltd, [2013] EWCA Civ 1174; [51];
  • Novartis v. EUIPO: Case T-44/16, EU:T:2018:48; [58];
  • Stokke chair design (Hauck v. Stokke) and other cited design-related discussions: numerous references in the 3(2) discussion.
• Notation of key concepts:
  • essential characteristics: the most important elements of the sign; stage 1 identification by the Registry; stage 2 assessment against the exclusions.
  • technical function: whether a sign’s essential characteristics perform a technical function and are causally linked to the function.
  • substantial value: objective assessment of whether the sign’s shape significantly influences consumer decisions beyond mere aesthetic appeal.

Summary Takeaways

• To register a trade mark, a sign must exist, be representable, and distinguish the goods/services of one business from others.
• Shapes/characteristics are not automatically registrable; three key exclusions apply when a sign is exclusively a natural/functional/ornamental shape or feature.
• The law balances brand protection with public interest in competition and access to technical solutions.
• The expansion beyond shapes to other characteristics (like colour, patterns) is a recent but ongoing development, with limited judicial guidance and growing registry-led interpretation.
• When evaluating eligibility, a two-stage test for essential characteristics and their relation to the exclusions is used, with consumer perception playing a role in consideration of stage 1 and possibly stage 2.
• Service marks for retail and comparison websites illustrate the scope of signs beyond goods, while collective and certification marks reflect governance structures for group use and certified quality/origin signals.
• The framework is dynamic, reflecting both market practice and evolving IP policy, with important implications for branding strategy, competition, and the interaction of multiple IP regimes.