Research On The Functionality Doctrine Of Trademark

Trademark functionality generally refers to the design or feature of a specific commodity or service,which is needed to realize the purpose or use of the commodity or service,or the application of these designs or features will affect the cost or quality of the commodity or service itself.If the design or feature has the above circumstances,the design or feature cannot be protected by trademark registration and exclusive right to use the registered trademark,which is called trademark functionality doctrine.Trademark functional doctrine is one of the most important but also the most confusing and uncertain fields in trademark law,and it may also be the most puzzling of all trademark theories.The doctrine of trademark functionality originated from the practice and theoretical research of American trademarks.When a certain sign has the function of identifying the source and has some functional features at the same time,copying this functional sign is considered as a natural right,and others can use it freely,but copying this sign may cause counterfeiting of other people’s trademarks and form a lawsuit of counterfeiting.At this time,there is a contradiction between the need to use the functional features in the market and the role of protecting the sign in identifying the source.The purpose of functionality doctrine is to reconcile this contradiction.As a way to allocate rights,functionality doctrine provides a way to solve contradictions within the framework of natural rights.With the rise of legal realism and the disappearance of natural rights jurisprudence,the conflict resolution mode centered on "the right to copy" has changed to competition policy.The right of reproduction gives way to the privilege of competition,and the protection of social interests in free competition is superior to the right of reproduction.The influence of the design or feature of a commodity on competition has become an important reference factor in judging whether the design or feature is functional or not.However,there is a lack of relative consensus on the specific application.American trademark law generally divides trademark functionality into utilitarian functionality and aesthetic functionality.The EU trademark law lists three situations of functionality.The academic circles try to correspond these three situations with the classification methods in the United States,and the shapes produced by the nature of commodities and the shapes needed to achieve the technical effects correspond to practical functionality,while the shapes that make commodities have substantial value correspond to aesthetic functionality.However,just as the trademark law of the United States does not form a consistent standard for functionality judgment,the European Union’s functionality judgment standard also lacks unity.This is reflected in the confusion and theoretical controversy in the application of trademark functionality doctrine.The provisions of functionality doctrine in China’s trademark law mainly show the prohibition of applying for registered trademarks for three-dimensional marks in three specific situations.The specific provisions draw on the relevant provisions of the European Union,but they borrow more from the American trademark functionality theory in interpretation,and do not form their own discourse logic,and show the imbalance between trademark salience and functional judgment in application.Although the functionality judgment has a theoretical "superior position" in trademark registration matters compared with the significance requirement in terms of excluding the definite relationship of trademark registration and the possibility of obtaining registration based on subsequent use behavior,in practice,the functional examination shows a "vacancy".Through the investigation and theoretical study of trademark practice,it is found that the "shape due to its own nature" in the doctrine of trademark functionality and the universality of logo are homogeneous in excluding trademark protection,and there is no objective or conceptual independence between logo and the goods it marks.Therefore,it is suggested to cancel this functionality situation and only conduct a distinctiveness review.In the utilitarian functionality examination of "the shape needed to realize the technical effect" and the aesthetic functional examination of "making the goods have substantial value",it is necessary to apply and transform the existing system to meet the actual needs and reserve space for the future.First,the applicable scope of trademark functionality doctrine should be changed from the closed state currently limited to threedimensional marks to the whole category of non-traditional trademarks with unlimited trademark components,and the specific objects should be determined according to the actual situation.Second,the application stage of functionality examination should be moved back,specifically,the functionality examination in the preliminary examination of the Trademark Office should be cancelled,and it should be moved back to the objection stage and invalid stage,which is conducive to improving the examination efficiency and ensuring the uniform standard application of functional principles.Third,the optimization of applicable standards of functional principles.The judgment of functional principle should aim at promoting competition,and it is suggested to take maintaining competition as the goal and adopt the standard of "competitive advantage".Whether it is practical functionality or aesthetic functionality,the basis of judgment is to prohibit the use of the design or feature that may be functional,and whether it forms a differentiated interest that does not belong to the trademark and forms a competitive advantage that does not belong to goodwill.If so,the design or feature is judged to be functional and should be excluded from trademark registration.On the basis of concrete judgment,we can refer to the following situations: whether the feature has an alternative design,whether it has a patent or has obtained a patent ever,whether the external publicity emphasizes its functional features,aesthetic value or other characteristics,and whether it is better or less costly to achieve the purpose of commodities.At the same time,combined with the characteristics of specific commodities,the reference factors were added or deleted,and finally a comprehensive judgment was made.