Trade Mark and Function

Abstract: The ''functionality doctrine'' discussed in this paper was developed in the American trademark law as a judicial concept. It emerged soon after the adoption of the U.S Federal Trademark Act in 1946 and was aimed to define the implementation of the provisions of the Act prohibiting the trade mark protection for the functional signs. The doctrine gained its universal application and nowadays is equally applicable both to the traditional ''functional'' signs such as shape and packaging and to the non-traditional trade marks. Gradually, the doctrine was expanded and today it includes not only the technically functional features but also all other dimensions of the possible trade sign functionality. With the harmonization of the trademark law in Europe and the appearance of the Community Trademark, ''functionality doctrine'' already well known in the U.S found its place in the European trademark law provisions. However, the European trademark law adopted different view on functionality. Figuratively speaking it interpreted the notion with the linguistic thoroughness. Thus, in the European trademark law trade sign is deemed functional if it possesses utilitarian features necessary to obtain technical result or/and if those features give a substantial value to the goods. Provisions of the Community Trademark Regulation covering this issue make clear that a ban on the trademark protection for the functional features of the product is firm and absolute. The ban, though, gives a rise to the number of relevant questions, such as: What makes shape or packaging functional? Obviously, that every basic shape of the product bears certain technical function. If it is so, then, is the provision prohibiting a shape and packaging trade mark per se? If not, what the particular criteria should be applied to distinguish the functional from the non-functional shape and trade dress of the product? And finally: what are the objectives of making the ban on any technical shape or packaging absolute? The paper aims at providing some clarification on the functionality theory adopted in the European trademark law. The methodology of the paper, however, is not limited to the analysis of the provisions of the European trademark law only, but pays a substantial attention to the relevant provisions of the American trademark law and existing there interpretation of functionality.