Fifteen years from Bellure to SkyKick:The extended functions of a trade mark in EU and UK law

In the recent UKSC ruling in SkyKick, Lord Kitchin offered some brief, but potentially significant, remarks on the extended functions of a trade mark first recognised by the ECJ in L’Oréal v Bellure. This article tests whether SkyKick was correct to describe those extended functions as ‘well recognised’. Reviewing the ECJ and UK case law that has developed on the extended functions, and the practitioner and scholarly response, it is argued that case law over the last 15 years since Bellure has achieved only limited clarity. While the extended functions seem well-embedded in EU and (most likely) post-Brexit UK law, the difficulties created by Bellure continue. There remains, in particular, considerable uncertainty over the substantive content of the extended functions, the relationships between them and whether they all are, or should be, independently protected.