As already pointed out, the CJEU applies the functionality doctrine in EU trademark law rather flexibly. The Court developed an elastic frame-work for assessing the functional nature of signs for which trademark protection is sought. This concerns not only technical product features (utilitarian functionality) but also aesthetic elements (aesthetic function-ality). With regard to efforts to keep signs with cultural significance free for remix and reuse in the cultural domain, it is promising that the CJEU opted for a relatively broad concept of aesthetic functionality inHauck/
Stokke. As discussed above, there can be little doubt that the CJEU aims at an open, flexible application of the doctrine of aesthetic functionality.
With the development of a whole list of assessment criteria,53the CJEU
53 CJEU, 18 September 2014, case C-205/13, Hauck/Stokke, para. 34–35.
clearly expressed the need for a comprehensive analysis based on varied factors. Nonetheless, the mitigating effect of the doctrine of aesthetic functionality is likely to remain limited when it comes to signs with cul-tural significance, such as fictional characters and signs belonging to the cultural heritage.
The GermanMarlene Dietrichdecisions shed light on the limits of aes-thetic functionality as an instrument to keep signs with cultural signifi-cance free of trademark protection. Discussing a request to register a por-trait photograph of Marlene Dietrich in respect of photographs, posters, postcards and goods of a similar nature, the German Federal Patent Court argued that the photograph of the famous actress constituted a mere reproduction of these goods, and invoked the exclusion of «the shape which results from the nature of the goods themselves» to deny re-gistration.54Hence, the Court was of the opinion that the mark was func-tional because it consisted of the product itself, and sought to use the shape exclusion as a vehicle to prevent the acquisition of trademark rights.
However, the decision was overruled by the German Federal Supreme Court which tersely concluded that the sign consisted of the reproduc-tion of the head of Marlene Dietrich and did not consist of a shape result-ing from the nature of a photograph, poster or postcard as such.55Seeing no room for the application of the functionality doctrine, the German Federal Supreme Court relied on the requirement of distinctiveness. It re-fused trademark protection in respect of goods and services concerning the work and life of the actress, such as books, magazines, photographs, posters, CDs, DVDs, musical performances and film productions. In re-spect of these goods and services, the public would perceive the portrait photograph as a mere indication of product characteristics.56Hence, the Court argued that the genuine cultural meaning underlying the photo-graph–showing the head of Marlene Dietrich –rendered the sign de-scriptive and incapable of serving as a trademark in respect of goods and services that are closely related to the work and life of the actress.
54 German Federal Patent Court, 9 November 2005, Porträtfoto Marlene Dietrich, para. 4.2.
55 German Federal Supreme Court, 24 April 2008, Marlene-Dietrich-Bildnis, para. 11.
56 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, para. 12–15. For relevant case precedents, see German Federal Supreme Court, 5 December 2002, case I ZB 19/00, Winnetou, 6; German Federal Supreme Court, 23 January 2003, case I ZR 171/00, Winnetous Rückkehr, 10.
This solution of the case has its price. In contrast to the functionality ground which had been invoked by the German Federal Patent Court, the hurdle of a lack of distinctiveness because of descriptive character can be surmounted once the sign becomes distinctive as a result of the use made of it in trade.57 Accordingly, the German Federal Supreme Court had to leave open the backdoor of acquired distinctive character:
as a result of use in trade, the Marlene Dietrich photograph may become distinctive with regard to goods and services related to the life and work of the actress at a later stage.58The Court added that the portrait photo-graph was inherently distinctive with regard to merchandising articles, such as scarves, hats, shirts and shoes. In this respect, it rejected the view expressed by the Federal Patent Court that consumers would perceive the portrait as a mere marketing tool and fail to understand that it served as an indication of commercial source.59The Federal Supreme Court em-phasized instead that the photograph did not necessarily need to be placed prominently on the articles. It could also be used as a label attached to the goods. Given this option of use as a badge of origin, distinctive character could not be denied.60Rejecting considerations of functional-ity, the decision thus leaves open several avenues for the acquisition of tra-demark rights to signs with cultural significance.
In the light of this decision, the functionality doctrine does not seem a very effective tool to categorically deny trademark rights to signs with cultural significance. Considerations of aesthetic functionality may lead to an effective ban on trademark protection in respect of products that are shaped exactly like an artwork, such as decorative items or furniture.
However, a trademark application seems immune from a refusal based on aesthetic functionality when it is argued that the cultural sign concerned would only be attached to the goods as a label–a line of reasoning that was decisive in the GermanMarlene Dietrichdecision.61If merely used as
57 Article 3(3) former Trade Mark Directive 2008/95 (Article 4(4) new Trade Mark Di-rective 2015/2436) which governs the application of national trade mark law in the EU (and EEA) Member States explicitly offers the possibility of acquiring distinctive character through use with regard to non-distinctive, descriptive and generic signs.
58 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, para. 17.
59 German Federal Patent Court, ibid., para. 8.1 and 8.2.
60 German Federal Supreme Court, ibid., para. 19–22. See also the confirmation of this points in German Federal Supreme Court, 31 March 2010, case I ZB 62/09, Marlene-Dietrich-Bildnis II, para. 20–28.
61 German Federal Supreme Court, 24 April 2008, case I ZB 21/06,
Marlene-Dietrich-a lMarlene-Dietrich-abel, Marlene-Dietrich-a culturMarlene-Dietrich-al sign cMarlene-Dietrich-an hMarlene-Dietrich-ardly be found to be functionMarlene-Dietrich-al. The sMarlene-Dietrich-ame cMarlene-Dietrich-an be said about a melody that is used for the purpose of marketing a pro-duct outside of the music sector. If the melody is used for marketing pur-poses, it does not define product characteristics and can hardly be deemed functional. Otherwise, the brand value which the sign represents in the form of a label or marketing tool would be sufficient to assume aes-thetic functionality. This, in turn, would lead to a circular line of reason-ing and the exclusion of any sign with brand value from trademark pro-tection. For example, the attachment of the Coca Cola logo to soft drinks would also lead to an exclusion of trademark rights because the brand va-lue of the logo adds substantial vava-lue to the product. Therefore, use as a label or marketing tool without direct impact on product characteristics (such as a melody) necessarily falls outside the scope of an outright ex-clusion of trademark protection based on considerations of aesthetic functionality. As the sign is not incorporated in the product itself, the functionality doctrine is not applicable as a legal instrument to exclude trademark rights.
Hence, the analysis sheds light on a weakness of functionality as a ground for refusal: signs with cultural significance need not define product char-acteristics as such. The Mickey Mouse drawing or the Mona Lisa need not feature prominently on the product itself. They can be employed as mere labels. If this mode of use is chosen, the functionality doctrine – relating to the «shape, or another characteristic»62 of the product – can no longer be invoked as a ground for refusing trademark rights from the outset. Hence, the option of attaching cultural signs as mere labels or using them as mere marketing tools without direct impact on product characteristics largely reduces the effectiveness of functionality as a tool to keep signs with cultural significance entirely free of trademark rights for the purpose of safeguarding freedom of expression and cultural fol-low-on innovation.