When the case was lodged the first time before the General Court, the latter considered that the Board of Appeal erred in applying a principle of reverse engineering to assess the real nature of the marks at issue on the basis of elements (Yoshida’s American patents) other than the trade mark applications. The Board of Appeal should not have concluded that the black dots were non-skid structures featured on the surface of the marks: it is the trade mark application that is the sole documentation to take into account since it includes the trade marks’ representations which define the scope of protection of the sign and must be self-contained.
That being said, the CJEU took a totally different stand upon receiving the appeal of Pi-Design, Bodum France and Bodum Logistic. The Court of Justice specified that the examination under Article 7.1.e.ii) must be in compliance with the provision’s purpose of public interest, so that it can encompass all relevant materials not limited to the trade mark’s graphic representation and descriptions.
Secondly, the General Court analysed whether the Board of Appeal correctly assessed the nature and the essential character of the contested marks’ main characteristics, identified in the contour of the trapezium shape and the arrays of black dots. Yes, said the Court: the Board of Appeal was right to conclude that the marks at issue constituted the shape of goods produced and marketed by the trade mark proprietor. Despite Yoshida’s denial, the trapezium shape was not a negligible element of the mark and indeed represented the handle of its knives or other cutlery. The Court also recognised that the array of black dots featured on the marks’ surface was nothing else than knives’ indentations.