Product and process functionality in shapes necessary to obtain a technical result under EU Trademark Law

European Union law permits to register the shape of goods as a trademark, providing an ad hoc set of rules governing this particular category of signs. The rationale underlying these limits is identified in a public policy objective, namely the need to avoid the creation of monopolistic effects on “valuable” shapes of goods (whether “natural”, “functional” or “ornamental”). Such public policy issues are particularly evident when shapes of goods perform a technical result. The concept of technical result has not been properly analyzed in case law until recent. However, it would rather be preferable to interpret the notion of technical result as including manufacturing methods, so to associate process and product functionality. Even though functionality does not concern distinctiveness, also signs consisting of shapes could follow the same model of protection. If a shape is formed by essential functional characteristics and essential non-functional characteristics (thus being registrable as stated in case law), the protection recognized to such a three-dimensional trademark against similar shapes cannot extend to its functional elements, but should be limited to its arbitrary parts. From this point of view, its arbitrary non-functional elements should not be construed “inversely” in a strict sense mirroring the notion of technical result, but should be intended as excluding process functionality features. In this way, the protected elements should not extend to utility aspects of the shape regarding manufacturing methods, in coherence with the inspiring public policy.