Should the Functionality Doctrine Apply to All Kinds of Trademarks? View from a Comparative Analysis of the US and the EU Approaches
The functionality doctrine in the US applies to all kinds of signs. By contrast, in the EU the functionality doctrine only applies to the shape of goods. This thesis firstly explores why the US and the EU have such difference, and finds that such difference mainly results from their different interpretation of functionality.Secondly, this thesis discusses what the consequences of such difference are. In the US, in most cases signs other than the shape of goods do not provide merely utilitarian advantages, and the denial of such trademark protection relies more on competitive necessity test. However, the competitive necessity test is vulnerable to overbroad application, in particular for words and logos. In the EU, without the application of functionality doctrine, the refusal to register signs other than the shape of goods mainly relies on the rules of graphic representation and distinctiveness. The approach in the EU has a possible problem that a sign having a functional feature as shown in the US cases might be registered after becoming distinctive through use, and thus would hinder fair competition. Under the current trademark system in the EU, the possibility of such problem is quite low. However, it is still possible if the acquisition of distinctiveness relies dominantly on consumer perception. One possible solution is to consider the availability or functional characteristics when the acquisition of distinctiveness is assessed. Another possible solution is to remove the restriction of functionality to shapes