Knife handle 'reminiscent of a dolphin' held to be invalid

In Reddig GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-164/11, September 19 2012), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that a three-dimensional (3D) Community trademark consisting of the shape of a knife handle was invalid.

Morleys Ltd filed an invalidity action under, among others, Articles 51(1)(a) and 7(e)(ii) of the Community Trademark Regulation (40/94) (now Articles 52(1) and 7(e)(ii) of the Community Trademark Regulation (207/2009)) against the following figurative trademark, which consisted of the shape of a knife handle:   

The invalidity action was upheld by both the Cancellation Division and the Second Board of Appeal of OHIM, which considered that, although the trademark included non-functional elements, in its essential characteristics it was exclusively constituted by the shape of the products necessary for obtaining the technical result (Article 7(1)(e)(ii) of the regulation).

On appeal, the owner of the mark argued before the General Court that:

• the Board of Appeal had applied incorrect criteria in order to identify the essential characteristics of the disputed trademark; and
• the Board of Appeal had not taken into account the general impression produced by the trademark (which, according to the mark owner, is reminiscent of that of a dolphin), but had assessed the various characteristics of the sign in isolation.

The General Court upheld the decision of the Board of Appeal.

According to the General Court, the Board of Appeal and the Cancellation Division had correctly applied the case-law criteria to identify the essential characteristics of the mark. Further, the Board of Appeal and the Cancellation Division had not erred in finding that the essential characteristics of the mark were all exclusively functional.

The General Court pointed out that, contrary to what the mark owner argued, the Board of Appeal had not in any way stated that the non-functional elements must play a more important role than the technical functional elements in order to be capable of being registered. The Board of Appeal had recognised that the trademark at issue consisted of non-functional elements, but had considered that those were not capable of constituting the essential characteristics of the trademark.

In addition, the General Court considered that the essential characteristics do not have to be determined on the basis of the overall impression produced by the mark, but may also be based on a detailed examination of each of the components of the sign concerned. Consequently, the Board of Appeal had not erred in finding that, although the knife handle at issue could be regarded as resembling a fish or a dolphin, the shape of the mark was due to characteristics having a technical function. The court pointed out that “the fact that the sum of the exclusively functional elements contributes to creating an ornamental image of a trademark of which the registration is sought is of no relevance to the possibility of registering a sign… as a Community trademark”.

This decision again demonstrates that it is extremely difficult to obtain protection for 3D trademarks under Community trademark law.

Patty de Leeuwe, Klos Morel Vos & Schaap, Amsterdam