TRADE MARK LAW
Ornamental and fanciful aspects do not preclude the ground for refusal under article 7(1)(e)(ii) of EU Trade Mark Regulation (exclusively the shape of goods that is necessary to obtain a technical result), in so far as those aspects do not play an important role in the shape of goods at issue, all the essential characteristics of which must perform a technical function.
"27. As regards the condition relating to the fact that the ground for refusal covers any sign consisting ‘exclusively’ of the shape of goods which is necessary to obtain a technical result, the Court has held that the presence of one or more minor arbitrary elements in a sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result. In addition, the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, with the result that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 52)."
Distinctiveness of a mark cannot preclude the application of the refusal ground of article 7(1)(e)(ii) of EU Trade Mark Regulation.
"34. Moreover, the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks, since it has excluded the grounds for refusal listed in Article 7(1)(e) of Regulation No 40/94 from the scope of the exception under Article 7(3) of that regulation.
It thus follows from Article 7(3) of the regulation that, even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 47)."
IPPT20170511, CJEU, Yoshida v EUIPO
C-421/15 - ECLI:EU:C:2017:360
(also see IPPT20140306, CJEU, Pi-Design v OHIM)