Original scientific paper
https://doi.org/10.25234/pv/11083
SUBSTANTIAL VALUE OF A PRODUCT SHAPE AS AN ABSOLUTE GROUND FOR TRADEMARK REFUSAL
Tea Hasić
orcid.org/0000-0001-6079-1156
; Faculty of Economics and Tourism “Dr. Mijo Mirković”, Juraj Dobrila University of Pula, Preradovićeva 1/1, 52100 Pula
Abstract
The paper provides a comprehensive analysis of “substantial value rule” as an absolute ground for trademark refusal. Originating from the US “aesthetic functionality doctrine”, the rule took a specific form in the EU. There it was incorporated in Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks – Article 4 (1) (e) (iii), as well as in Regulation (EU) 2017/1001 on the European Union trade mark - Article 7 (1) (e) (iii). Pursuant to “substantial value rule”, signs consisting exclusively of the shape that gives substantial value to the goods are not to be registered as trademarks or, if registered, are liable to be declared invalid. The objective of the paper is therefore threefold: a) to define the rationale of “substantial value rule”; b) to analyze relevant case law; c) to conclude whether a respective rule shall be abolished (providing its purpose may be achieved by other legal instruments without negative side-effects) or kept in the EU trademark law system. Bearing in mind the rationale of “substantial value rule” (on the one hand) and numerous problems that arise whenever “substantial value rule” is applied in practice (on the other hand) the paper provides guidelines for its appropriate interpretation.
Keywords
substantial value rule; aesthetic functionality doctrine; absolute grounds for trademark refusal; shape marks; 3D trademarks
Hrčak ID:
250022
URI
Publication date:
31.12.2020.
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