CIPIL Seminar: 'Is Functionality Functioning? Exclusions for 3D Marks in the EU'

Location: B16, Faculty of Law
Speaker: Dr Dev S Gangjee, Associate Professor, Faculty of Law, University of Oxford

Abstract: Applications to register shape or 3D signs as trade marks don't seem to be having much luck. Recent judicial pronouncements have elaborated upon each of the three 'functionality' based prohibitions – relating to 'natural', technical and aesthetic shapes – contained within Art 3(1)(e) of the Trade Marks Directive and raised the bar for registrability along the way. While the underlying policy basis for doing so is sound, the recommended methodology is more questionable. To take just two examples: (1) A shape is only excluded if its 'essential features' are necessary to produce a technical result, but the very concept of 'essential features' and the multifactor test to identify them give rise to a number of difficulties. 'Essential features' is the gateway to all three objections, so this is a serious defect. (2) Another question which has recently arisen is the extent to which the registry should be restricted to an analysis of the application documentation, the sign on paper, as opposed to its use in the marketplace. Can the registry read real world content into a black and white isometric drawing of a 'cage' on the application form, in order to unmask it as the arguably technical Rubik's Cube? This presentation will therefore cover not only recent doctrinal developments under each of the three prohibitions (thereby shamelessly pandering to the student audience), but will also consider how trade mark doctrine processes shapes mark exclusions in conceptual and methodological terms.

Dev Gangjee joined Oxford in 2013 as an Associate Professor in Intellectual Property within the Law Faculty as well as a Tutorial Fellow at St Hilda's College. He is presently Director of the Oxford Diploma in IP Law and Practice. Prior to this, he was a senior lecturer at the London School of Economics. Dev is a graduate of the National Law School of India and Oxford, where he was a Rhodes Scholar. He has acted in an advisory capacity for national governments, law firms, international organisations and the European Commission on IP issues.

Dev's research focuses on Intellectual Property (IP), with a special emphasis on Branding and Trade Marks, Geographical Indications and Copyright law. Additional research interests include the history and political economy of IP, collective and open innovation, and the interface between IP and theories of development. He is an Academic Member of the Oxford IP Research Centre and a Research Affiliate with IP Osgoode, Canada. He is also an Editorial Board member of the Modern Law Review and editor for its Legislation and Reports Section.