The Absolute Ground for Refusal or Invalidity in Article 7(1)(e)(iii) EUTMR/4(1)(e)(iii) EUTMD: In Search of the Exclusion's Own Substantial Value

Abstract

Among the absolute grounds for refusal or invalidity in EU trade mark law, there is one for signs that consist exclusively of “the shape, or another characteristic, which gives substantial value to the goods”. The ‘substantial value’ exclusion has received relatively limited attention and practical application. Some commentators have called for its abolition on consideration that other, clearer absolute grounds may perform its role without giving rise to those issues linked to its uncertain meaning and scope.

This contribution reviews relevant EU case law on the substantial value ground, in order to define rationales, scope, and functions thereof. It submits that the substantial value ground performs a role – primarily that of preventing or limiting a distortion of the role of trade mark registration – which cannot be subsumed in other grounds. However, clearer guidance on certain fundamental aspects, including the role of the average consumer, reputation, and the relevance of the behaviour of the trade mark applicant/owner, is still required.

Keywords: substantial value, trade marks, absolute grounds, shapes, unconventional trade marks, trademarks