You have an innovative product with a recognisable technical feature – and you are considering how to protect it. Trade mark, registered design, patent? The wrong answer is costly.
Movements, sounds, holograms: trade mark law today admits far more than words and logos. For businesses this is tempting, because a trade mark can be renewed indefinitely – unlike a patent or a registered design. Yet that is precisely where the trap lies. Whoever attempts to protect a technical product feature through trade mark law will regularly fail. The General Court of the European Union (GC) confirmed this once again with its judgment of 14 January 2026 (T-9/25).
Background to the case
A German manufacturer of expedition vehicles filed a motion mark application at the EUIPO: the opening and closing of a special folding window. The window panel moves downward and outward, revealing two black struts on the sides that are concealed when the window is closed. Protection was sought for "vehicle windows for expedition vehicles".
The EUIPO examiner and Board of Appeal refused registration. The General Court upheld that refusal – thereby rejecting a strategy that many companies find appealing: permanently monopolising the technical characteristics of their own product through a trade mark.
The decisive hurdle: technical function
Art. 7(1)(e)(ii) of the EU Trade Mark Regulation excludes from protection signs that consist exclusively of a feature which is necessary to achieve a technical result.
The rationale is one of economic policy and is central in practice: no one should be able to obtain an unlimited monopoly over a technical solution by means of trade mark law. For technical inventions there is the patent (protection period generally 20 years); for aesthetic design there is the registered design (maximum 25 years). Both have a fixed term. A trade mark does not. If technical functions could be protected as trade marks, a de facto perpetual monopoly would arise over something that may only be protected for a limited period – and competitors wishing to offer the same solution would be permanently barred from doing so.
How the court assesses the matter – in two steps
- Identify the essential characteristics. Not every detail counts, but rather the defining elements of the sign.
- Examine the technical function. If those essential characteristics fulfil a technical function of the goods, the ground for refusal applies.
In the present case the General Court treated the sequence of movement as a whole – opening and closing – as the essential characteristic. The lateral struts form part of this because they move with the panel; they are not decorative additions but are load-bearing and stabilising. The colour change at the frame emphasised by the manufacturer is nothing other than the natural interplay of light and shadow produced by any moving object – and therefore not an independent, non-functional element.
Result: All essential characteristics serve the technical function of "admitting light and air into an enclosed space". The ground for refusal alone sustained the refusal – the absence of distinctiveness no longer needed to be addressed.
Three arguments companies typically rely on – and why they fail
The manufacturer advanced precisely the objections we regularly encounter in advisory practice. None of them held:
"But there are technical alternatives." True – and irrelevant. Since the Lego judgment (C-48/09 P), it is settled that the feature need not be the only technical solution. If it were otherwise, every variant of a solution could be separately protected as a trade mark, foreclosing the market for competitors.
"Our design is atypical for the industry." That argument also fails. Consumer perception is at most a tool for identifying the essential characteristics – it does not determine functionality. What is technically effective remains technical, even if it looks unusual.
"The colour change is purely decorative." The court classified it as mere shadow – an inevitable by-product of the movement. Anyone seeking protection on the basis of decorative elements must demonstrate their independent significance – not merely what follows as a matter of course from the movement.
What this means for your IP strategy
The decision is not a defeat for innovation but a clear rule: trade mark law protects indicators of origin, not technical solutions. For companies with technically complex products requiring explanation, the practical implications are these:
Clarify the direction of protection before filing. If a badge of origin (source, recognition) is to be protected, a trade mark is the right vehicle. If a technical solution is to be protected, it belongs in a patent. If the aesthetic appearance is what matters, the registered design is the appropriate tool. In the folding-window case, patent or design protection would have been the more viable route.
When considering new types of marks, take the overall assessment into account. Motion marks, shape marks, position marks, and multimedia marks are all available – but the court assesses the sequence of movement as a whole, not each detail in isolation. Such a mark has prospects only if it contains visible, defining, and demonstrably non-functional elements. Shadows, reflections, or inevitable by-effects of a movement are not sufficient.
Combine IP rights rather than exhausting them one at a time. In many cases the economically optimal solution is a coordinated portfolio: a patent or utility model for the technology, a registered design for the aesthetic presentation, and a trade mark for what genuinely signals origin. This allows the subject-matter of protection to be cleanly divided, rather than failing at the wrong IP right.
Are you planning to protect a distinctive product and unsure which form of IP protection will hold? Arrange a free initial assessment.
Conclusion
T-9/25 fits consistently into the line of authority running from the Lego judgment: whoever seeks to monopolise a technical function through trade mark law will fail. What matters is not whether a feature looks unusual but whether it can be separated from the technical function. The expensive option is not to clarify this before filing. Choosing the right direction of protection at an early stage – trade mark, registered design, patent, or a combination – saves fees, appeal proceedings, and above all the time spent on a strategy that will not hold.
Would you like to prepare a trade mark application or establish your IP portfolio on a strategic footing?
FAQ
1. Can a movement or product shape be protected as a trade mark at all?
In principle, yes. Motion marks, shape marks, position marks, and multimedia marks are eligible for registration. They fail, however, when the sign consists exclusively of technically necessary features.
2. Does it help that there are technical alternatives to my solution?
No. Since the Lego judgment it is settled that the feature need not be the only technical solution. The ground for refusal applies even where alternatives exist.
3. My product looks different from everything else on the market – is that not enough?
No. An unusual appearance does not render a functional feature capable of constituting a trade mark. Consumer perception merely assists in identifying the essential characteristics; it does not determine functionality.
4. Which form of IP protection is right for a technical invention?
As a rule, a patent (or utility model). A registered design protects the aesthetic appearance; a trade mark protects the indicator of origin. A coordinated combination is frequently the most sensible approach.
5. When should I seek legal advice?
Before filing. An early assessment of registrability saves application and appeal costs and prevents lengthy proceedings with a foreseeable outcome.
