A twist too functional: General Court rejects hand-grip corkscrew trade mark
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Marcel Pemsel
Mar 12, 2026, 2:19:07 AM (4 days ago) Mar 12
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A twist too functional: General Court rejects hand-grip corkscrew trade mark
Can a corkscrew handle shaped like a human hand grip be registered
as an EU trade mark, or is such a form purely functional? The General
Court's judgment in Empreinte v EUIPO (T-437/25) offers a cautionary tale for designers hoping to protect innovative but technically driven product shapes.
Background
In March 2024 the French company Empreinte filed an application for registration of the following 3D EU trade mark for "corkscrews":
Background
In March 2024 the French company Empreinte filed an application for registration of the following 3D EU trade mark for "corkscrews":
The
metal helix (or drill) was shown in dotted lines, indicating that
Empreinte sought protection only for the handle portion.
Initially, the European Union Intellectual Property Office ("EUIPO") objected to the application because it lacked distinctiveness under Art. 7(1)(b) EUTMR. After Empreinte submitted observations, the examiner withdrew that objection but rejected the application under Art. 7(1)(e)(ii) EUTMR, which bars registration of signs consisting exclusively of the shape or another characteristic of a product necessary to obtain a technical result.
Empreinte's appeal to the EUIPO’s Board of Appeal (“BoA”) was unsuccessful, so it filed an action with the General Court.
The General Court's decision
The General Court dismissed the appeal.
1. Adequate statement of reasons
Empreinte argued that the BoA had failed to provide adequate reasons for its decision (Art. 94(1) EUTMR), particularly by not demonstrating that all essential features were "exclusively" functional and by relying on general formulations rather than technical evidence.
The Court disagreed, finding that the BoA had clearly identified the essential characteristics of the sign and explained why each served a technical function. The judges emphasized that the obligation to state reasons is a procedural requirement separate from the substantive correctness of the reasons. Or put simply: erroneous reasoning does not amount to missing, contradictory or unintelligible reasoning.
2. No violation of procedural rights
Empreinte complained about the EUIPO switching from a distinctiveness objection to a functionality objection, thereby depriving Empreinte of the opportunity to effectively prepare its defense, violating the right to good administration and the right to an effective remedy.
The Court found no breach of procedural rights. Under Art. 45(3) EUTMR, the EUIPO may raise new absolute grounds of refusal at any time before registration. Further, all absolute grounds are equal in the sense that there is no order in which they are to be examined.
Finally, Empreinte had been given an opportunity to respond to the new objection and had actually done so both before the EUIPO's examiner and the BoA.
3. The functionality assessment under Art. 7(1)(e)(ii) EUTMR
The heart of the decision concerned whether the shape was exclusively composed of features necessary to obtain a technical result.
The judges recalled that this provision aims to prevent trade mark protection from conferring a perpetual monopoly over technical solutions that competitors might need.
The BoA identified the following essential characteristics of the sign:
(a) An irregular handle reminiscent of a vine-stock or bone, moulded from a hand imprint;
(b) Hollows corresponding to each finger of a right-handed user; and
(c) A shaft extending into a helix.
All these features, the BoA found, were dictated by the product's technical function, namely gripping and extracting a cork from a bottle.
The General Court agreed, adding that Art. 7(1)(e)(ii) EUTMR also applied to marks representing a part of a product (as in the present case) but not the entire product, provided that it is quantitively and qualitatively a significant part of the whole product.
a. The dotted-line helix
Empreinte argued that the helix, shown in dotted lines, should be excluded from the analysis because it was not claimed as part of the mark.
The Court disagreed, holding that even elements not formally claimed may be considered when necessary to understand the functionality of the claimed elements. Since the handle's ergonomic design only makes sense in relation to a tool designed to extract corks, the helix had to be taken into account.
b. Aesthetic or arbitrary elements
Empreinte further contended that the irregular surfaces, grooves and excrescences were aesthetic choices, not technical necessities.
Initially, the European Union Intellectual Property Office ("EUIPO") objected to the application because it lacked distinctiveness under Art. 7(1)(b) EUTMR. After Empreinte submitted observations, the examiner withdrew that objection but rejected the application under Art. 7(1)(e)(ii) EUTMR, which bars registration of signs consisting exclusively of the shape or another characteristic of a product necessary to obtain a technical result.
Empreinte's appeal to the EUIPO’s Board of Appeal (“BoA”) was unsuccessful, so it filed an action with the General Court.
The General Court's decision
The General Court dismissed the appeal.
1. Adequate statement of reasons
Empreinte argued that the BoA had failed to provide adequate reasons for its decision (Art. 94(1) EUTMR), particularly by not demonstrating that all essential features were "exclusively" functional and by relying on general formulations rather than technical evidence.
The Court disagreed, finding that the BoA had clearly identified the essential characteristics of the sign and explained why each served a technical function. The judges emphasized that the obligation to state reasons is a procedural requirement separate from the substantive correctness of the reasons. Or put simply: erroneous reasoning does not amount to missing, contradictory or unintelligible reasoning.
2. No violation of procedural rights
Empreinte complained about the EUIPO switching from a distinctiveness objection to a functionality objection, thereby depriving Empreinte of the opportunity to effectively prepare its defense, violating the right to good administration and the right to an effective remedy.
The Court found no breach of procedural rights. Under Art. 45(3) EUTMR, the EUIPO may raise new absolute grounds of refusal at any time before registration. Further, all absolute grounds are equal in the sense that there is no order in which they are to be examined.
Finally, Empreinte had been given an opportunity to respond to the new objection and had actually done so both before the EUIPO's examiner and the BoA.
3. The functionality assessment under Art. 7(1)(e)(ii) EUTMR
The heart of the decision concerned whether the shape was exclusively composed of features necessary to obtain a technical result.
The judges recalled that this provision aims to prevent trade mark protection from conferring a perpetual monopoly over technical solutions that competitors might need.
The BoA identified the following essential characteristics of the sign:
(a) An irregular handle reminiscent of a vine-stock or bone, moulded from a hand imprint;
(b) Hollows corresponding to each finger of a right-handed user; and
(c) A shaft extending into a helix.
All these features, the BoA found, were dictated by the product's technical function, namely gripping and extracting a cork from a bottle.
The General Court agreed, adding that Art. 7(1)(e)(ii) EUTMR also applied to marks representing a part of a product (as in the present case) but not the entire product, provided that it is quantitively and qualitatively a significant part of the whole product.
a. The dotted-line helix
Empreinte argued that the helix, shown in dotted lines, should be excluded from the analysis because it was not claimed as part of the mark.
The Court disagreed, holding that even elements not formally claimed may be considered when necessary to understand the functionality of the claimed elements. Since the handle's ergonomic design only makes sense in relation to a tool designed to extract corks, the helix had to be taken into account.
b. Aesthetic or arbitrary elements
Empreinte further contended that the irregular surfaces, grooves and excrescences were aesthetic choices, not technical necessities.
The
Court noted that even if an element has some aesthetic quality, this
does not prevent its exclusion under Art. 7(1)(e)(ii) EUTMR if it
remains fundamentally functional, which was true for the grip. Moreover,
minor arbitrary elements are not sufficient to exclude the
functionality ground.
c. Case law on technical designs
Empreinte argued that the conditions set out in DOCERAM (case C-395/16) and Papierfabriek Doetinchem (C-684/21, IPKat here) for a finding of technicality of EU designs under Art. 8(1) EUDR were not fulfilled.
The judges rejected this argument because Empreinte did not explain why the principles established in these decisions should apply to the present case.
d. Alternative forms and distinctiveness
Empreinte pointed to other corkscrew designs on the market as evidence that its shape was not technically necessary and argued that it departed radically from traditional corkscrews.
The Court rejected this argument, citing consistent CJEU case law holding that the existence of alternative shapes is irrelevant to the functionality analysis.
Likewise, distinctiveness was not relevant in the assessment of Art. 7(1)(e)(ii) EUTMR.
4. No reversal of burden of proof or violation of equal treatment
Finally, Empreinte argued that the BoA had reversed the burden of proof by not relying on technical evidence such as patents or expert opinions. The Court found that, given the straightforward nature of the product, a simple visual analysis was sufficient. The EUIPO was entitled to rely on well-known facts, including the dictionary definition of a corkscrew.
Comment
This decision provides a textbook application of the functionality exclusion.
1. Even though Art. 7(1)(e)(ii) EUTMR requires that a shape be "exclusively" functional to be refused, the courts accept that aesthetic qualities may coexist with functional purposes without saving the mark from refusal if they are not sufficiently pronounced.
If aesthetic elements merely enhance the technical function (grip comfort in the present case), they remain tied to function and are unlikely to overcome Art. 7(1)(e)(ii) EUTMR.
2. Art. 7(1)(e)(ii) EUTMR, like all other absolute grounds, also applies to signs representing parts of products. The Court's finding that the part must be sufficiently significant qualitatively and quantitatively should be treated with caution. As long as the part has a technical purpose, Art. 7(1)(e)(ii) EUTMR should be applied. Otherwise, small technical components, such as the lock of a suitcase, could be registered despite serving purely functional purposes.
3. The fact that a shape may be distinctive because it deviates significantly from the norms and customs in the relevant sector does not prevent it from falling foul of Art. 7(1)(e)(ii) EUTMR. Designers should not only try to create a shape that is new and unique but also add design features that have no connection to the product's functionality.
c. Case law on technical designs
Empreinte argued that the conditions set out in DOCERAM (case C-395/16) and Papierfabriek Doetinchem (C-684/21, IPKat here) for a finding of technicality of EU designs under Art. 8(1) EUDR were not fulfilled.
The judges rejected this argument because Empreinte did not explain why the principles established in these decisions should apply to the present case.
d. Alternative forms and distinctiveness
Empreinte pointed to other corkscrew designs on the market as evidence that its shape was not technically necessary and argued that it departed radically from traditional corkscrews.
The Court rejected this argument, citing consistent CJEU case law holding that the existence of alternative shapes is irrelevant to the functionality analysis.
Likewise, distinctiveness was not relevant in the assessment of Art. 7(1)(e)(ii) EUTMR.
4. No reversal of burden of proof or violation of equal treatment
Finally, Empreinte argued that the BoA had reversed the burden of proof by not relying on technical evidence such as patents or expert opinions. The Court found that, given the straightforward nature of the product, a simple visual analysis was sufficient. The EUIPO was entitled to rely on well-known facts, including the dictionary definition of a corkscrew.
Comment
This decision provides a textbook application of the functionality exclusion.
1. Even though Art. 7(1)(e)(ii) EUTMR requires that a shape be "exclusively" functional to be refused, the courts accept that aesthetic qualities may coexist with functional purposes without saving the mark from refusal if they are not sufficiently pronounced.
If aesthetic elements merely enhance the technical function (grip comfort in the present case), they remain tied to function and are unlikely to overcome Art. 7(1)(e)(ii) EUTMR.
2. Art. 7(1)(e)(ii) EUTMR, like all other absolute grounds, also applies to signs representing parts of products. The Court's finding that the part must be sufficiently significant qualitatively and quantitatively should be treated with caution. As long as the part has a technical purpose, Art. 7(1)(e)(ii) EUTMR should be applied. Otherwise, small technical components, such as the lock of a suitcase, could be registered despite serving purely functional purposes.
3. The fact that a shape may be distinctive because it deviates significantly from the norms and customs in the relevant sector does not prevent it from falling foul of Art. 7(1)(e)(ii) EUTMR. Designers should not only try to create a shape that is new and unique but also add design features that have no connection to the product's functionality.
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