{"id":1811,"date":"2026-09-25T10:26:33","date_gmt":"2026-09-25T08:26:33","guid":{"rendered":"https:\/\/www.osservatorio-ip.it\/en\/?p=1811"},"modified":"2026-09-25T10:26:33","modified_gmt":"2026-09-25T08:26:33","slug":"technical-functionality-secondary-meaning-and-the-protectability-of-3d-shape-trademarks","status":"publish","type":"post","link":"https:\/\/www.osservatorio-ip.it\/en\/2026\/09\/25\/technical-functionality-secondary-meaning-and-the-protectability-of-3d-shape-trademarks\/","title":{"rendered":"Technical functionality, secondary meaning and the protectability of 3D shape trademarks"},"content":{"rendered":"\n

In its judgment of July 30th<\/sup> 2026, the Court of Rome revisited one of the most debated issues in trademark law, namely whether the shape of packaging characterized by a pronounced technical function may be protected as a 3D shape trademark. The case concerned a well-known dual-compartment yogurt cup.<\/p>\n\n\n\n

The decision is noteworthy for the rigor with which the Court reiterated the limits of protection afforded to shape trademarks, reaffirming that trademark law cannot be turned into a means of securing a potentially perpetual monopoly over technical solutions that must remain freely available to all market operators.<\/p>\n\n\n\n

The case<\/strong><\/p>\n\n\n\n

The claimant submitted that, since the 1980s, it had been selling yogurt-based products packaged in a dual-compartment container consisting of a square base divided into two triangular compartments, designed to separately contain, on the one hand, yogurt and, on the other, an additional ingredient such as cereals, chocolate, etc. According to the claimant, this packaging had been used for decades both for products sold under its own trademarks and in connection with private-label production for large-scale retail chains.<\/p>\n\n\n\n

In 2019, the defendant registered in Italy 3D shape trademark No. 302019000031937, consisting precisely of the shape of the dual-compartment container. On the basis of that IP right, the defendant subsequently began challenging the use of similar packaging by various large-scale retail operators supplied by the claimant, asserting the rights arising from the registration.<\/p>\n\n\n\n

Against this background, the claimant brought an action for a declaration of invalidity, based primarily on the argument that the registered shape was exclusively functional and lacked distinctive character because it had already been widely used on the market prior to the filing of the trademark application.<\/p>\n\n\n\n

The ground for refusal under article 9(b) of the Italian Intellectual Property Code: the shape necessary to obtain a technical result<\/strong><\/p>\n\n\n\n

The application for a declaration of invalidity was brought pursuant to Article 9(b) of the Italian Industrial Property Code, which excludes from registration signs consisting exclusively of a shape necessary to obtain a technical result.<\/p>\n\n\n\n

According to the Court, in the present case, all the essential features of the dual-compartment packaging served a specific practical function, namely:<\/p>\n\n\n\n

i)<\/em> the separation of the two compartments makes it possible to keep the yogurt and the additional ingredients separate;<\/p>\n\n\n\n

ii)<\/em> the structure preserves the organoleptic characteristics of the individual products;<\/p>\n\n\n\n

iii)<\/em> the configuration facilitates mixing immediately prior to consumption by inverting one compartment over the other.<\/p>\n\n\n\n

These features therefore derive from the functional requirements of the product rather than from arbitrary or decorative choices capable of performing a distinctive function.<\/p>\n\n\n\n

The Court also rejected the objections raised by the defendant on this point.<\/p>\n\n\n\n

The first objection was based on the existence of alternative configurations, in particular on the defendant’s argument that the same technical result could also have been achieved by containers having a different shape. The Court nevertheless rejected this argument, referring to the established case law of the Court of Justice of the European Union, according to which the existence of alternative solutions on the market is not sufficient to rule out the functional nature of the shape at hand.<\/p>\n\n\n\n

The second argument advanced by the defendant concerned distinctive character acquired through use, the so-called \u201csecondary meaning\u201d. The defendant had produced extensive documentation relating to sales volumes, advertising and consumer surveys intended to demonstrate that the public associated the dual-compartment container with its products and its brand identity. The Court nevertheless held that such evidence was irrelevant, on the ground that the mechanism allowing signs to acquire distinctive character as a result of prolonged use cannot operate where the sign consists exclusively of a functional shape.<\/p>\n\n\n\n

Lack of novelty of the shape<\/strong><\/p>\n\n\n\n

The invalidity of the trademark was further based on a second ground, namely the absence of the novelty requirement in respect of the three-dimensional trademark at issue.<\/p>\n\n\n\n

Indeed, the evidence gathered in the proceedings showed the long-standing and tolerated coexistence on the Italian market of products packaged in similar dual-compartment containers, used not only by the defendant but also by numerous other market operators.<\/p>\n\n\n\n

In this context, according to the Court, consumers would not perceive the shape of the packaging as an indication of the commercial origin of the product, but merely as a type of container serving a function dictated by the characteristics of the product itself. The identity of the product would instead be conveyed by the word and figurative trademarks affixed to the packaging.<\/p>\n\n\n\n

Accordingly, the Court held that the prolonged use of the same packaging by different market operators prevents the shape from fulfilling the essential function of a trademark, namely that of indicating the commercial origin of the goods.<\/p>\n\n\n\n

Concluding remarks<\/strong><\/p>\n\n\n\n

The judgment of the Court of Rome therefore constitutes yet another concrete reaffirmation of the principles governing shape marks. In particular, the Court reiterated that the protection afforded by trademark law cannot be used to remove from the free availability of the market technical solutions that have become part of the common heritage of the relevant sector.<\/p>\n\n\n\n

The decision also confirms that the commercial success of a product and the association established in the mind of consumers cannot overcome the absolute ground for refusal applicable to functional shapes. Where a configuration is necessary to achieve a technical result, the public interest in maintaining free competition must prevail over the individual operator’s interest in retaining exclusive rights over the shape of the product or its packaging.<\/p>\n\n\n\n

Against this background, the judgment is coherent with the well-established national and European approach aimed at preventing the permanent monopolization of technical solutions through trademark registration.<\/p>\n","protected":false},"excerpt":{"rendered":"

In its judgment of July 30th 2026, the Court of Rome revisited one of the most debated issues in trademark law, namely whether the shape of packaging characterized by a pronounced technical function may be protected as a 3D shape trademark. The case concerned a well-known dual-compartment yogurt cup. The decision is noteworthy for the […]<\/p>\n","protected":false},"author":3,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"inline_featured_image":false,"footnotes":""},"categories":[169],"tags":[243,245,242,244,208],"class_list":["post-1811","post","type-post","status-publish","format-standard","hentry","category-trademarks","tag-3d-shape","tag-novelty","tag-secondary-meaning","tag-technical-result","tag-trademark"],"acf":[],"_links":{"self":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1811","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/users\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/comments?post=1811"}],"version-history":[{"count":1,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1811\/revisions"}],"predecessor-version":[{"id":1812,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1811\/revisions\/1812"}],"wp:attachment":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/media?parent=1811"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/categories?post=1811"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/tags?post=1811"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}