Trademarks are usually signs or images, but they can also be defined by a three-dimensional shape, e.g. the shape of a product. However, so that shapes of goods with a purely technical effect cannot be monopolized by means of a 3D trademark, such shapes of goods are excluded from protection. Trademarks that at first glance appear to be a two-dimensional design cannot be protected either if there is a technical function behind them.

Yoshida Metal Industry Co Ltd filed the Trademarks for household and kitchen utensils such as knives, forks and spoons and other such goods in 1999. The examiner of the EU Trademark Office refused the Applications on the basis of Art. 7 (1) (B) of the EU Community Trademark Regulation because they were devoid of any distinctive character. After the Board of Appeal overturned the refusal, the Trademarks were registered in 2002.

In 2007, Pi-Design and Bodum France applied for the cancellation of the Trademarks on the grounds that they consisted exclusively of the shape of the product necessary to obtain a technical result (i.e. a violation of Art. 7 para. 1 lit. e ii). Although the Cancellation Division of the EU Trade Mark Office (EU-IPO) rejected the attacks, the Board of Appeal of the EU-IPO upheld the applications for invalidity. It justified its decision as follows, among other things:

It is true that the disputed Trademarks were categorized as figurative marks at the time of registration and Yoshida has argued in the present Appeal Proceedings that it is a “random geometric figure” or a “pattern of dots”. However, Yoshida already stated in its reply to an examination decision in the registration proceedings at that time that it was the “shape of the product”, namely a knife handle. Moreover, the photographs of the goods sold by Yoshida submitted to the Board of Appeal confirmed that the Trademarks depicted the outline of a knife handle with dot-shaped indentations. The Board of Appeal therefore found that the disputed sign “is a figurative mark consisting of a two-dimensional representation of the handle of the goods applied for”. Under these circumstances, the ground for refusal under Article 7(1)(e)(ii) may also be applicable against the present figurative mark.

The Board of Appeal further states that, in view of the information from existing Patents, the recesses are necessary for an anti-slip effect. The fact that it is possible to achieve the same technical result with other shapes does not mean that the ground for refusal under Article 7(1)(e)(ii) cannot apply. Thus, the Board of Appeal confirmed the invalidity of the Trademarks.

In 2010, Yoshida filed a Lawsuit with the European Court of First Instance for annulment of the EUIPO’s decision. Firstly, Article 7(1)(e)(ii) had been misinterpreted in terms of its scope, secondly, the subject matter of the Trademarks had been incorrectly assessed and thirdly, the ground for refusal had been incorrectly applied. In 2012, the court ruled that the Lawsuit should be upheld with regard to the second point (incorrect assessment of the subject matter of the Trademarks) and that the EUIPO’s decision should be annulled.

Pi-Design appealed to the ECJ. The latter overturned the judgment of the Court of First Instance and referred the case back for a different assessment. The Court of First Instance then dismissed Yoshida’s Lawsuit in its entirety. Yoshida’s further appeal to the ECJ was unsuccessful.

The ground for refusal in Art. 7(1)(e)(ii) is limited to signs which consist “exclusively” of the shape of the goods which is “necessary” to obtain a technical result. This wording of the law takes due account of the fact that every shape of goods is functional to a certain extent and it would therefore be inappropriate to exclude a shape of goods from registration as a Trademarks merely because it has utilitarian properties. By using the words “exclusively” and “necessary”, this provision ensures that only those shapes of goods which embody only a technical solution are excluded from registration. Registering such Trademarks would hinder the use of this technical solution by other companies.

The prohibition of protection for signs that consist “exclusively” of the shape of the product, which is necessary to achieve a technical effect, is also applicable if one or more minor arbitrary elements are present in the sign. The decisive factor for the exclusion of protection is that all the essential characteristics of the Trademarks are determined by the technical solution. If, on the other hand, the shape of the product in question also embodies an important non-functional element, such as a decorative or fanciful element, which is significant for this shape, then Art. 7 para. 1 let. e ii) is not applicable.

The fact that Art. 7(1)(e)(ii) states that the shape of the goods is “necessary” to achieve the desired technical effect does not mean that the shape in question must be the only one that allows this effect to be achieved.

As a result, Yoshida’s Trademarks have been definitively declared null and void.

Note: The possibility of protecting shapes of goods as Trademarks is thus clearly limited to those shapes which, in addition to the technical shape features, also have other essential features which are purely decorative or imaginative.

Left: https://www.supremecourt.gov/opinions/16pdf/16-341_8n59.pdf