It’s OK to reverse-engineer trade marks, says the CJEU

This is an interesting tale about investigations, knives, philosophical speculation and two-dimensional signs that magically become 3-D. The author is our beloved Court of Justice of the European Union (CJEU), which yesterday provided guidelines as to which elements can be considered in assessing the very essential nature of a trade mark and its compliance with absolute grounds (Yoshida Metal Industry Co. v Pi-Design AG and others, Joined Cases C‑337/12 P to C‑340/12 P).

In 1999, the Japanese company Yoshida Metal Industry Co. Ltd filed Community device mark applications No. 1371244 and No. 1372580 covering the two-dimensional signs illustated on the right in connection with some products of classes 8 and 21 (namely “Cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels, fish bone tweezers” and “Household or kitchen utensils and containers (not of precious metal or coated therewith), turners, spatulas for kitchen use, knife blocks for holding knives, tart scoops, pie scoops”).

After their registration, three European companies (Pi-Design AG, Bodum France and Bodum Logistics A/S, ‘the claimants’) applied for a declaration of invalidity based on the plea that Yoshida’s trade marks consisted of a shape necessary to obtain a technical result [now] under Article 7(1)(e)(ii) of Regulation 207/2009 (CTMR). According to the claimants, those two signs were nothing but the handles of Yoshida’s typical knives, many of which bore concave dots to prevent the knife handle from slipping. This was also allegedly confirmed by two patents owned by Yoshida (US 6195899 and EP 1116507B1), both claiming knives having handles with “side faces … each formed with a nonskid structure comprised of an array of semispherical dents … for preventing the knife from slipping in the user's hand”. Yoshida, contested those arguments, alleging that the “technical function” ground of refusal could not apply to two-dimensional signs and that the examination should be limited to the signs as they appear on the registration certificates, being in that case two geometrical shapes encompassing an array of black dots.

One of the drawings
of Yoshida's patents

While the Cancellation Division accepted Yoshida’s arguments and upheld the validity of its registrations, the Board of Appeal ruled in favour of their cancellation. First, it held that the classification of a mark as figurative was not able to exclude the application of the technical function test, with which all trade marks must comply. Secondly, the Board of Appeal found that the handles of knives manufactured by Yoshida and the latter’s patents could not be mere coincidence, concluding that the frame surrounding the black dots represented the outline of a knife handle and that the black dots were indeed to be intended as concave dents necessary to obtain the technical result of preventing the knives from slipping in the users’ hand.

Yoshida's anti-slipping knives

Yoshida appealed the decisions to the General Court (‘GC’), which took a partially different view in Cases T-331/10 and T-416/10. While it agreed that the technical function ground applies to all sorts of trade marks, as Article 7(1)(e) CTMR makes “no distinction between three-dimensional shapes, two-dimensional shapes, or two-dimensional representations of three-dimensional shapes”, it said the Board of Appeal went too far in speculating upon what Yoshida’s sign could represent. In particular, the GC ruled that “[t]here is nothing in the graphic representation of the contested mark to suggest that the black dots in question represent dents rather than a figurative pattern” and that “in concluding that the dots were concave in character, the Board of Appeal did not refer to the sign as filed, but to representations of the goods actually marketed by the applicant”, practicing a “reverse engineering” which was held to be contrary to Article 52(1)(a) CTMR.

Pi-Design AG, Bodum France and Bodum Logistics A/S then appealed to the CJEU, which in yesterday’s ruling set aside the GC’s decisions and remitted the issue to the GC.

As a matter of principle, the CJEU held that, in light of the public-policy interest that Article 7(1)(e) of CTMR pursues, it applies both to two- and three-dimensional signs, excluding their registration wherever their essential characteristics perform a technical function.

Lego's decision is mighter
than non-skidding knives

However, continued the CJEU, the GC erred in considering that a trade mark examination should be carried out without considering elements further to “the sign as reproduced in the registration application”. In this regard, the Court cited its earlier case law in [one of] the Lego cases [Lego Juris v OHIM, Case 48/09 P], where it established that the identification of the sign’s essential characteristic for the purposes of Article 7(1)(e) of the CTM Regulation can be carried out not only by means of a simple visual analysis of the sign, but also on the basis of “a detailed examination in which material relevant to the assessment is taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned”. In the case at issue Yoshido’s earlier patents and the products marketed by the applicant [as happened with the earlier patents in Lego] could well-be considered ‘relevant material’ in view of the examination of the possible technical function of the trade mark.

In this regard, the Court stated, it is also fine to consider relevant material to the trade mark’s application date. Indeed, while under Article 52(1)(a) CTMR the application date is the seminal moment for the examination invalidity grounds, examiners and Courts are free to consider any material subsequent to the date of application insofar as it enables conclusions to be drawn with regard to the situation as it was on that date [see the CJEU’s orders in Alcon v OHIM, in Case C-192/03 P, and Torresan v OHIM, in Case C-5/10]. Therefore, in the case at issue, compliance with EU Law required consideration of the actual use made of the trade mark following its registration  [that is to say, Yoshida’s knife products].

It is an established principle in EU trade mark case law that any assessment shall duly consider actuality [actual confusion, actual technical function, actual use -- and that’s all, actually]. Nonetheless, this Kat is intrigued by the width of investigative and interpretational freedom that examiners and courts would have in assessing trade mark validity according to this decision. Although it’s a kind of magic to transform two-dimensional basic shapes in knives’ handles and some innocent black dots in concave, semispherical dents, allowing such philosophical speculations over the ontological nature of a sign and as to how it could be used in the future might lead to dangerous uncertainties and different interpretations [when he first saw the trade marks as issue, e.g., this Kat would have bet that they represented two blades rather than handles]. Wouldn’t it be easier to simply say that perhaps Yoshida’s trade marks were not that distinctive?