OHIM rebuked for referring to representations of goods actually marketed

European Union

In Yoshida Metal Industry Co Ltd v Office for Harmonisation in the Internal Market (OHIM) (Cases T-331/10 and T-416/10, May 8 2012), the General Court has found that OHIM had erred in upholding applications for a declaration of invalidity filed by the interveners, Pi-Design AG, Bodum France and Bodum Logistics A/S, against two figurative trademarks registered by Yoshida Metal Industry Co Ltd on the basis that the marks consisted of a shape necessary to obtain a technical result under Article 7(1)(e)(ii) of the Community Trademark Regulation (207/2009).

In 1983 Yoshida introduced the GLOBAL line of stainless steel knives. On November 3 and 5 1999 it filed applications for the registration of the following two-dimensional figurative signs as Community trademarks (CTMs) in Classes 8 ("cutlery, scissors, knives, forks, spoons, whetstones, whetstones holders, knife steels, fish bone tweezers") and 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") of the Nice Classification

CTM 1

CTM 2

OHIM registered CTM 1 on April 16 2003 and CTM 2 on September 14 2002.

On July 10 2007 the interveners lodged applications for a declaration of invalidity of the marks on the grounds that they had been registered contrary to Article 7(1)(e)(ii) of the regulation, as they consisted of a shape necessary to obtain a technical result. The interveners claimed that the dots appearing on the handles of the knives constituted slightly recessed dents which served to prevent the knife handle from slipping. In support of their arguments, the interveners referred to two patents held by Yoshida.

By decision of July 21 2008, the Cancellation Division of OHIM rejected the applications in their entirety. The interveners filed a notice of appeal on August 25 2008, which was upheld by the First Board of Appeal on the grounds that the marks had been registered contrary to Article 7(1)(e)(ii) of the regulation, as they consisted of a shape necessary to obtain a technical result.

Yoshida appealed, claiming that Article 7(1)(e)(ii) was not applicable in the present case, as the article applies only to the shape of goods and not to ordinary two-dimensional figurative trademarks which cannot constitute a "shape" within the meaning of Article 7. Furthermore, if Article 7(1)(e)(ii) were applicable, the signs which should be taken into account are only the marks as filed. These were filed to protect two-dimensional signs which bear no relation to the appearance of the goods which they denote. Finally, Yoshida claimed that the pattern consisting of black dots did not evoke the shape of a knife and did not perform a technical function.    

The General Court divided the claims into three separate issues:

  • whether Article 7(1)(e)(ii) is applicable to two-dimensional signs;
  • whether the board was entitled to analyse the signs applied for as seeking to protect a three-dimensional shape in taking the view, by reference to the goods actually marketed by Yoshida, that the dots of the pattern corresponded to dents; and
  • in the event of an affirmative reply to the two previous questions, whether the contested trademarks consisted exclusively of the shape of goods which was necessary to obtain a technical result.

Regarding the first issue, the court noted that Article 7(1)(e)(ii) does not define the signs which must be considered as shapes within the meaning of that provision. The court stressed that the article is intended to prevent the protection conferred by a trademark right from being extended beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing the latter from freely offering for sale goods incorporating such technical solutions or functional characteristics in competition with the proprietor of the trademark. Thus, Article 7(1)(e)(ii) makes no distinction between two and three-dimensional shapes. The court stated that Article 7(1)(e)(ii) applies to any sign, whether two or three-dimensional, where all the essential characteristics of the sign perform a technical function.

Turning to the second issue, the court initially noted that there was nothing in the graphic representation of the marks to suggest that the black dots represented dents rather than a figurative pattern, and the registrations were not accompanied by any description to that effect. Accordingly, when suggesting that the dots represented dents, the board had referred to the representations of the goods actually marketed by Yoshida.

The court noted that it followed from case law that only the shape as reproduced in the registration application may be the subject-matter of the examination of a trademark. This rule is dictated by the requirement of legal certainty, which requires that a third party seeking to use a sign in the course of trade should be able to precisely verify what registered trademarks already exist in order to avoid any infringement. Furthermore, pursuant to Article 52(1)(a) of the regulation, the examination of an application for a declaration of invalidity according to Article 7 must relate to the situation obtained at the time of filing, which rules out consideration of the actual use made of the trademark following its registration.

Accordingly, the court found that the board had erred in departing from the graphic representation of the trademarks when it referred to representations of the goods actually marketed by Yoshida in order to conclude that the black dots appearing in the marks were concave in character. Consequently, the court ruled that the board's contested decisions should be annulled, without it being necessary to examine the third issue.

Nina Ringen, Plesner, Copenhagen

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