General Court: 2D marks consisting of black dots on knife handle are invalid

In Yoshida Metal Industry v Office for Harmonisation in the Internal Market (OHIM) (Joined Cases T-331/10 RENV and T-416/10 RENV, May 21 2015), the General Court has declared that two trademarks representing an array of black dots on a knife handle were invalid.

In 1999 Yoshida Metal Industry filed applications for two figurative Community trademarks (depicted below) for goods in Classes 8 and 21 of the Nice Classification and, notably, for knives and kitchen utensils:

The examiner rejected those applications on the ground that they lacked distinctive character. However, following the annulment of one of the rejection decisions, the two trademarks were registered in September 2002 and April 2013.

In 2007 Pi-Design, Bodum France and Bodum Logistics started two invalidation actions against the two trademarks, alleging infringement of Article 7(1)(e)(ii) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009). This provision contains an absolute ground for refusal for signs which consist exclusively of the shape of goods which is necessary to obtain a technical result.

In 2008 the Cancellation Division of OHIM rejected this action and confirmed the validity of the marks. In 2010 the Board of Appeal of OHIM annulled the decisions of the Cancellation Division and declared the registrations invalid on the basis of Article 7(1)(e)(ii).

In 2012 the General Court annulled the decisions of the Board of Appeal on the ground that the latter had not referred to the signs as filed, but to representations of the goods marketed by Yoshida at the time. In 2014 the Court of Justice of the European Union (ECJ) set aside the judgments of the General Court for violation of Article 7(1)(e)(ii). The General Court had erred in law in holding that the provisions at issue precluded consideration of the actual use made of a trademark following its registration.

As a consequence, the cases were referred back to the General Court, which issued its judgment on May 21 2015. The General Court upheld the decisions of the Board of Appeal which had declared the registrations to be invalid and dismissed Yoshida’s single plea in law.

Before the court, Yoshida first claimed that Article 7(1)(e)(ii) did not apply to two-dimensional figurative marks. In contrast, the General Court found that the provision applied to any sign, whether two or three-dimensional, where all the essential characteristics of the sign perform a technical function. Article 7(1)(e)(ii) makes no distinction between three-dimensional shapes, two-dimensional shapes, or two-dimensional representations of three-dimensional shapes.

Second, Yoshida argued that its trademarks were similar to position marks and, as such, did not constitute a ‘shape’ within the meaning of Article 7(1)(e)(ii). Yoshida sought to register trademarks representing abstract geometrical figures including black dots. In its view, the marks at issue were presented inside a frame looking like the contour of a knife handle simply to show how the black dots were generally affixed to the goods. Yoshida reinforced its argument by mentioning that it already held three-dimensional marks and had no interest in registering the same shapes once again.

However, the General Court refused to qualify the trademarks as position marks: the contours of the signs, which represented knife handles, were subject to the protection sought and were an essential characteristic thereof. The General Court based its conclusion notably on the fact that the contours were not dot-printed and that the application for registration contained no precise detail to that effect.

Considering the representations of Yoshida’s products, the court affirmed that the dots represented dents, this finding being confirmed by European and US patents held by Yoshida. The court noted that it was not disputed that the dots were an important characteristic of the signs. The court concluded that the signs constituted a ‘shape’ within the meaning of Article 7(1)(e)(ii) since they were two-dimensional figurative marks representing three-dimensional shapes.

Third, Yoshida contested the interpretation made by the Board of Appeal, which had considered the dents as necessary to obtain a technical result (namely, preventing the hand holding the knife from slipping accidentally). The General Court observed that the dents did seek to incorporate a technical solution, which was a non-skid structure. The court declared that Yoshida’s argument that it had filed its trademark applications at the same time as its US and European patent applications - which, in Yoshida’s view, indicated that it did not intend to extend the monopoly of its patents - was irrelevant.

The General Court also rejected Yoshida’s argument that dents are not necessary to obtain a non-skid character: the fact that other knives fulfil a non-skid function by other means or that those dents are not necessarily incorporated into all kitchen knives was irrelevant.

Seeking to demonstrate that the dots had no clear technical function, Yoshida claimed that they had an ornamental and fanciful nature. The General Court ruled this argument out, judging that the signs had no clear ornamental character: the configuration of the array of black dots, as well as the shape of the black dots themselves, showed no significant characteristic and covered practically all of the handles represented.

Finally, the General Court concluded that the registration of the signs at issue would improperly reduce the possibilities for competitors to bring to the market alternative product shapes incorporating the same non-skid technical solution. It confirmed that the registrations of the marks at issue had to be declared invalid, pursuant to Article 7(1)(e)(ii), given that the essential characteristics of the signs consisted exclusively of the shape of goods necessary to obtain a technical result.

The Board of Appeal decisions declaring the marks to be invalid were thus confirmed.

The position taken by the General Court flows from established case law and, in particular, from the judgments in Lego Juris v OHIM (Case C-48/09 P) and Philips (Case C-299/99). In Lego Juris, after almost 15 years of proceedings, the ECJ confirmed that Lego’s application for a three-dimensional trademark representing a toy brick had to be rejected, in accordance with Article 7(1)(e)(ii).

In the present case, the question is now whether the judgment will be appealed once again.

Richard Milchior, Granrut Avocats, Paris