Louboutin heels and the competition goals of EU trade mark law

This article critically examines the judicial applications of the EU functionality doctrine and argues that recent CJEU decisions are at odds with the EU legislator’s declared intention to give functionality a much greater role in promoting product market competition. As a statutory ground for refusing registration even in the presence of consumer association and established goodwill, EU functionality serves to avoid undue competitive advantages by refusing protection in support of freedom to compete. EU functionality represents a significant obstacle to registration for purely natural, technical and value adding signs representing the shape of the goods. As of 2015, the wording now includes not only the shape but also another product “characteristic” such as colour, sounds, scents, texture, etc. Thus, these tripartite criteria underpinning EU functionality are likely to affect the registration of unconventional marks or product trade dress brands. This article undertakes a deeper examination into each of these non-functionality criteria, highlighting problematic interpretations and suggesting ways to improve existing practice. Unlike existing narratives, this article places the competition goals of EU trade mark law at the centre of the debate and within a much broader context beyond functional signs exclusions, which also includes the general eligibility conditions and nondistinctiveness requirements.