EU General Court's invalidity finding on 3D shape mark highlights med devices' trade mark woes

The General Court has confirmed that a 3D shape mark is invalid for an inhaler for chronic obstructive pulmonary disease (COPD) is invalid because of its functional shape. Trade mark law prevents the registration of signs which consist exclusively of the shape of goods which is necessary to obtain a technical result, even if the sign indicates trade origin.

This decision is an important reminder that if the  shape mark performs a technical function then the mark will not be registered. This is to ensure that the registration would not impede the use of the technical solution by others. This is the case even if the technical result could be achieved with alternative shapes. One or more minor arbitrary elements in a sign will not alter this conclusion. However, where the shape mark relates to the shape of goods in which a non-functional element plays an important role registration may still be possible.

Cancellation dispute

In 2019, Glenmark Pharmaceuticals applied to cancel Boehringer Ingelheim's HandiHaler 3D shape mark covering goods in class 10. In 2021, the EU Intellectual Property Office Cancellation Division declared the mark invalid because of its functional shape.

In 2023, the Board of Appeal dismissed Boehringer's appeal. In particular, it found that the four essential characteristics of the mark – the container, lid, mouthpiece and button – were all technically indispensable elements of the product. It also held that the overall convex shape of the mark could not be defined as a major arbitrary, decorative or aesthetic element and therefore the convex shape was also functional. Boehringer appealed to the General Court.

Essential characteristics

At the General Court, Boehringer argued that the overall convex shape of the mark is an essential characteristic that did not serve a technical function. The General Court rejected this argument, acknowledging that the shape followed the contour of three of the essential characteristics (the container, lid and button).

Boehringer had argued that the shape was symmetrical or that it presents a particular design that has seen the HandiHaler win awards. This, however, could not make the overall convex shape an essential characteristic. The court said that this related to the alleged distinctive character of that shape, which is irrelevant in identifying essential characteristics. It was not necessary to consider whether the overall convex shape performed a technical function because it was not an essential characteristic.

When examining the technical functionality of the shape mark, the General Court held that the Board of Appeal was entitled to use patents that describe the functional elements of the shape to assess the technical functionality of the shape. It said that the patents established that the essential characteristics of the shape mark had technical functions and the Board of Appeal rightly found that those elements were necessary for inhaling a medical substance. The fact that the technical result could be achieved by another shape was irrelevant.

Major arbitrary, decorative or aesthetic element

Alternatively, Boehringer asserted that the overall convex shape constituted a major arbitrary, decorative or aesthetic element. However, the General Court found that the symmetrical and curved shape of the mark did not confer "a particularly imaginative or decorative character". Even if the shape had been held to differ from other shapes of inhalers on the market by being curved, that was not enough to be "sufficiently significant and surprising to define it as a major arbitrary element".

Osborne Clarke comment

This General Court decision adds to a line of cases that highlight the difficulty for life sciences companies in maintaining effective trade mark protection for medical devices, such as inhalers. In this case, Boehringer's patents played a central role in evidencing the technical function of the shape of the inhaler. It was irrelevant that the technical function could be achieved by another shape.

This underscores the care trade mark holders need to take to assess what technical functions the shape might have and to omit references to elements that serve no technical function from any related patents. This can avoid reliance being placed on the patents to demonstrate the technical function of those elements.

Given the increasing difficulty in registering shape marks for medical devices, registered design protection should also be considered as an alternative form of protection. Registered designs provide an easier route to registration, a 12-month novelty grace period from first disclosure, and a substantial deferment of publications to maintain confidentiality and therefore should prove to be a useful alternative.