When functionality cuts deep, it can be hard to handle: Yoshida appeal dismissed

Last year the Court of Justice of the European Union (CJEU) remitted to the General Court Joined Cases C‑337/12 P to C‑340/12 P Pi-Design AG, Bodum France SAS and Bodum Logistics A/S v OHIM, Yoshida Metal Industry Co. Ltd, in order to revisit the trade mark dispute concerning a Community trade mark (CTM) representing a surface with black dots, resembling a knife-handle, as reported by Alberto on the IPKat here.

In short, the dispute turned on the applicability of Article 7(1)(e) ii) of Regulation 40/1994 (long since superseded by Regulation 207/2009) to a figurative mark consisting of a two-dimensional representation of a three-dimensional shape of what was said to be the handle of one of Yoshida's knives.  That provision is aimed at prohibiting the registration as trade marks of (de)signs which consist exclusively of the shape of goods which is necessary to obtain a technical result. The public interest underling this provision is obvious and addresses the market’s need to keep technical solutions and functional characteristics free for use on part of the trade mark proprietor’s competitors. Moreover, the sign still must work as a commercial origin identifier.

In reliance on this ground of non-registrability, Pi-Design and the two Bodums applied to invalidate Yoshida's registration of an “array of dots appearing on the handles of knives”, registered for goods in class 8 “cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels, fishbone tweezers” and, in class 21, ”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".

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.

In its judgment yesterday, the General Court ruled on the single plea in law raised by Yoshida, as divided into three parts, and rejected Yoshida's appeal.

First, the Court observed that, contrary to Yoshida's argument, Article 7(1)(e)(ii) applies not only to three-dimensional marks but also to two-dimensional marks representing the shape of a product, when all its features serve a technical function. 

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.

Thirdly, the Court addressed the interplay between various IP rights (i.e. trade marks, patents, designs) and IP holders’ strategies to bolster those rights either by extending them or by replacing the protection of one of them with another.

 The Court took the view that, on the basis of Yoshida’s patents, the indentations included in the contested CTMs were there to obtain the technical result of providing the knives with a non-skid structure. Although the array of dots could not be patented, they were relevant in assessing the nature of the contested marks, where they were considered an essential feature of the products for trade mark purposes.

The fact that Yoshida’s patents and the contested CTMs were filed at the same time did not affect the outcome of the application since, bearing in mind the public interest of Article 7(1)(e)(ii), when patent protection expires, trade marks may grant protection for unlimited periods of time.

Other arguments set out by Yoshida were equally unsuccessful: that the shape of the handle could equally or even more contribute to the non-skid effect of the cutlery just confirmed that such a handle had a functional character; although the dents could not be necessary for the non-skid effect, also provided that the handle’s shape could serve that purpose, the invalidity ground was not to be excluded; finally, either the shape of the handle or the disposition of the array of black dots had no fanciful or ornamental character.

All in all, the Yoshida’s marks were found capable of preventing other competing undertakings from using either similar or identical shapes which were considered to be purely functional shape for a technical result.