Although a shape may qualify for trade mark protection, such protection is subject to a limit where the sign consists exclusively of the shape of a product that is necessary to obtain a technical result.
The rationale behind this exclusion is to prevent the proprietor of a registration from perpetuating a monopoly over technical solutions or functional characteristics that competitors should be free to use, particularly where other intellectual property rights, such as patents, already exist and are limited in duration.
The application of this prohibition raises a particularly relevant question when the advantages associated with a product’s shape originate in its manufacturing process. Should such a shape fall outside the scope of the prohibition simply because the technical advantage initially manifests itself during manufacturing, or is it also relevant where its effects subsequently extend to the functioning and use of the product?
It is precisely this boundary that the General Court of the European Union addressed in its judgment of 3 June 2026 in Case T-104/25, Lami Packaging v EUIPO – Tetra Laval, concerning the three-dimensional shape of a packaging container.
Tetra Laval Holdings & Finance SA is the proprietor of a three-dimensional trade mark filed in 2000 and registered for packaging containers and packaging materials made of paper or paper coated with plastic material in Class 16. The sign consisted of the shape of an octagonal container, reproduced below:
In January 2022, Lami Packaging (Kunshan) Co. Ltd, the applicant for invalidity, filed an application seeking a declaration of invalidity of the trade mark, arguing that the registered shape consisted exclusively of characteristics necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.
The Cancellation Division initially upheld the invalidity application. However, the EUIPO Board of Appeal subsequently overturned that decision, finding, in particular, that the essential characteristics relating to the shape of the product represented by the contested mark affected its manufacturing process but did not influence the function performed by the product itself.
The Board of Appeal’s reasoning relied on a distinction that was, in principle, correct: it is one thing for the shape of a product to provide certain advantages during its manufacturing process, and quite another for those characteristics to produce a technical result during the product’s use.
This distinction derives from the case law of the Court of Justice, and in particular from the judgment of 16 September 2015 in Société des Produits Nestlé (C-215/14, EU:C:2015:604), concerning the three-dimensional shape of the well-known Kit Kat bar. In that case, the Court held that the exclusion relating to shapes necessary to obtain a technical result concerns the way in which a product functions, rather than the way in which it is manufactured.
On that basis, the Board concluded that the shape of the container allowed a specific volume of liquid to be held using less cardboard. However, it considered that this advantage primarily benefited the manufacturer by reducing costs and material consumption, without genuinely affecting the product’s performance once placed on the market. It therefore concluded that the technical result occurred during the manufacturing process and fell outside the scope of the trade mark exclusion.
The applicant accordingly brought an action before the General Court seeking annulment of that decision.
First, the General Court expressly referred back to the Société des Produits Nestlé judgment and reiterated that the assessment of a technical result must be carried out by reference to the functionalities of the shape during the use of the product, whereas the methods by which it is manufactured are irrelevant from the perspective of the end consumer.
The key question was whether the advantages associated with the container’s configuration were confined to the manufacturing process or whether they also extended to the product’s use. It is precisely on this point that the General Court departed from the Board of Appeal’s assessment.
The General Court observed that the product covered by the contested mark was a container whose principal technical function was to hold liquids or food products, and that all of the mark’s essential characteristics contributed to enabling the product to perform that technical function. The Court further noted that the shape of the mark helped ensure the container’s stability and facilitated its handling, both of which are technical advantages relevant to the product’s use.
Particular attention was given to the relationship between the container’s capacity and the amount of material required for its manufacture. The prismatic shape makes it possible to contain a given volume while using less cardboard than a traditional parallelepiped-shaped container. At first glance, one might assume that this advantage relates exclusively to the manufacturing stage: less material is needed to produce the same product. However, the Court considered that its effects do not end at the production line.
Using less material makes the container lighter and less bulky, thereby facilitating its storage and transportation. Moreover, for a given quantity of material, the configuration allows the container to hold a greater volume of liquid or food product, making its basic function more efficient. Accordingly, although the advantage originates in manufacturing optimisation, its consequences extend to the way the product functions and is subsequently used.
Lastly, the General Court clarified that, although the relevant public for the contested mark consisted of professional customers, it remained appropriate to assess the functionality of the mark’s essential characteristics by taking into account the position of end users who are ultimately expected to purchase the products. In this regard, the Court noted that the technical advantages deriving from the shape of the contested mark also affect the way in which the product is used by final consumers. Thanks to its particular shape, the container is easier for consumers to hold and use.
In light of the above, the General Court found that the Board of Appeal had erred in concluding that the technical result achieved by the contested mark related solely to the product’s manufacturing process and had no impact on the function performed by the product itself.
Consequently, the Court held that the shape of the contested mark was necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94, thereby confirming a broad interpretation of the exclusion applicable to trade marks consisting exclusively of shapes necessary to achieve a technical result. The decisive criterion is not when the technical advantage arises, but whether its effects extend to the use, operation or performance of the product once it has been marketed. From this perspective, the Court rejected an overly rigid separation between manufacturing and use, finding that an advantage initially linked to industrial optimisation may still fall within the exclusion where it also contributes to improving functional aspects such as capacity, lightness, stability, transportation, storage or ease of handling.
The judgment therefore reinforces the principle that trade mark law cannot be used to perpetuate technical advantages that should remain available to all economic operators once the specific exclusive rights designed to protect technical innovation have expired.
For businesses, the ruling also serves as an important reminder of the limits separating trade mark protection from the protection of technical solutions. A particular product configuration that delivers manufacturing efficiencies will not necessarily qualify for trade mark registration if it also provides functional advantages throughout the product’s commercial life. The judgment therefore highlights the importance of developing protection strategies that take a coordinated approach to the various forms of intellectual property available and points towards a particularly strict application of the functionality exclusion in relation to three-dimensional trade marks.
